International Business Machines CorporationDownload PDFPatent Trials and Appeals BoardDec 18, 20202020002501 (P.T.A.B. Dec. 18, 2020) Copy Citation 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. 15/366,721 12/01/2016 Ryan Goodyear DeJana CA920160092US1_8134-0149 4650 73109 7590 12/18/2020 Cuenot, Forsythe & Kim, LLC 20283 State Road 7 Ste. 300 Boca Raton, FL 33498 EXAMINER DURNIN, RACHEL F ART UNIT PAPER NUMBER 3626 NOTIFICATION DATE DELIVERY MODE 12/18/2020 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RYAN GOODYEAR DEJANA, FRANZ FRIEDRICH LIEBINGER, and EDGAR ADOLFO ZAMORA ____________ Appeal 2020-002501 Application 15/366,721 Technology Center 3600 ____________ Before CAROLYN D. THOMAS, JAMES B. ARPIN, and MICHAEL J. ENGLE, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20. See Claim Appendix. We have jurisdiction over the appeal 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. Appellant identifies the real party in interest as International Business machines Corporation. Appeal Br. 4. Appeal 2020-002501 Application 15/366,721 2 The claimed invention relates generally to a transfer of management responsibilities for a digital object. See Abstract. Independent claim 1, reproduced below, is representative of the appealed claims: 1. A method, comprising: receiving from a first digital object management system a message requesting a transfer of management responsibilities for a digital object representing an asset from the first digital object management system to a second digital object management system; responsive to receiving the message requesting the transfer of the management responsibilities for the digital object representing the asset from the first digital object management system to the second digital object management system: retrieving the digital object from the first digital object management system; performing at least one operation updating data contained within the digital object by executing, using a first processor, at least a first application contained within the digital object; and communicating the digital object to the second digital object management system for storage in a digital object database. Appellant appeals the following rejections: R1. Claims 1–20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to patent-ineligible subject matter without significantly more. Final Act. 3–9. R2. Claims 1, 2, 8, 9, 15, 16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rogel (US 2013/0031643 A1, Jan. 31, 2013) and Al-Masoud (US 2017-0206604 A1, July 20, 2017). R3. Claims 3, 4, 10, 11, 17, and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rogel, Al-Masoud, and Wilson (US 2017/0103391 A1, Apr. 13, 2017). Appeal 2020-002501 Application 15/366,721 3 R4. Claims 5, 12, and 19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rogel, Al-Masoud, Wilson, and DeWolf (US 2002/0032626 A1, Mar. 14, 2002). R5. Claims 6, 7, 13, 14, and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rogel, Al-Masoud, and Dettinger (US 2007/0078687 A1, Apr. 5, 2007). We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). ANALYSIS Rejection under § 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. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Court’s two-part framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with the framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 Appeal 2020-002501 Application 15/366,721 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). For example, concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). The USPTO published revised guidance on the application of 35 U.S.C. § 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”), updated by USPTO, October 2019 Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/default/files/documents/ peg_oct_2019_update.pdf) (jointly referred to as “Revised Guidance”); see also October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the availability of the October update). Under the Revised Guidance “Step 2A,” the office first looks to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). 84 Fed. Reg. at 51–52, 55. Appeal 2020-002501 Application 15/366,721 5 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, does the Office then (pursuant to the Revised Guidance “Step 2B”) look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 84 Fed. Reg. at 56. Step 2A, Prong 1 (Does the Claim Recite a Judicial Exception?) With respect to independent method claim 1, and similarly, system claim 8 and computer-readable storage medium claim 15, the Examiner determines that the claims are directed to “an idea of itself . . . such as concepts of ‘Collecting, displaying, and manipulating data’” (Final Act. 3), which we conclude are mental processes, which is a type of abstract idea. Although the previously recognized category of “an idea of itself” is not one of the currently recognized categories, it is sufficient for the purposes of the present appeal that the claimed concepts reasonably can be characterized as falling within the still-recognized category of mental processes. See, e.g., MPEP § 2106.04(a)(2)(III): The courts have used the phrase “an idea ‘of itself” to describe an idea standing alone such as an uninstantiated concept, plan or scheme, as well as a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011). Appellant’s Specification discloses: The present invention relates to data processing, and more specifically, to data storage. Spec. ¶ 1. Appeal 2020-002501 Application 15/366,721 6 A method includes receiving from a first digital object management system a message requesting a transfer of management responsibilities for a digital object representing an asset from the first digital object management system to a second digital object management system. The method also can include, responsive to receiving the message requesting the transfer of the management responsibilities for the digital object representing the asset from the first digital object management system to the second digital object management system, retrieving the digital object from the first digital object management system, performing at least one operation updating data contained within the digital object by executing, using a first processor, at least a first application contained within the digital object, and communicating the digital object to the second digital object management system for storage in a digital object database. Spec. ¶ 3. In other words, Appellant’s Specification illuminates that the character of the present invention looks at receiving data, retrieving data, updating data, and transmitting data for storage. See also Ericsson Inc. v. TCL Commc’ns Tech. Holdings Ltd., 955 F.3d 1317, 1325 (Fed. Cir. 2020) (“[T]he specification may be helpful in illuminating what a claim is directed to [but it] must always yield to the claim language when identifying the ‘true focus of a claim.”’) (citation omitted). Specifically, claim 1 recites at least the following limitations: (1) “receiving . . . a message requesting a transfer of management responsibilities for a digital object,” and responsive thereto (2) “retrieving the digital object,” (3) “performing at least one operation updating data contained within the digital object,” and (4) “communicating the digital object . . . for storage.” These limitations, under their broadest reasonable interpretation, recite mental processes because the limitations recite steps that can be performed in the human mind and/or by using pen and paper. Appeal 2020-002501 Application 15/366,721 7 The Office explains, “claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions.” October 2019 Update: Subject Matter Eligibility at 7 (citing Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016)). This is true even if the claim recites that a generic computer component performs the acts. See, e.g., Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.”); see also 2019 Eligibility Guidance 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind.”). These limitations, under their broadest reasonable interpretation, encompass acts people can perform using their minds or pen and paper because people can perform the “receiving” and “retrieving” steps by simply looking at the message and digital object. People can also perform the “updating” step either mentally or by using pen and paper to update the data. Finally, people can mentally store information. Appellant does not directly challenge whether the claims are directed to an abstract idea, but instead make arguments more directly related to integrating the judicial exception into a practical application and whether specific limitations are not well-understood, routine, conventional activity in the field. Such arguments will be address below. Appeal 2020-002501 Application 15/366,721 8 Therefore, for at least the aforementioned reasons, we agree with the Examiner that claim 1 recites an abstract idea, which we conclude is a mental process. Step 2A—Prong 2 (integration into Practical Application)2 Under the Revised Guidance, we now must determine if additional elements in the claims integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). Here, we consider the claim as a whole, i.e., “the limitations containing the judicial exception as well as the additional elements in the claim besides the judicial exception . . . evaluated together to determine whether the claim integrates the judicial exception into a practical application.” October 2019 Patent Eligibility Guidance Update, at 12, available at http://www.uspto.gov/PatentEligibility. Beyond the abstract ideas noted above in the Prong-1 analysis, claim 1 also recites the following additional elements: “a first/second digital object management system,” “a digital object,” “a first processor,” “a first application,” and “a digital object database.” In addition to the components recited in claim 1, claim 15 further recites a “computer readable storage medium.” However, these additional elements (1) do not improve the functioning of a computer or other technology; (2) are not applied with any particular machine (except for a generic computer); (3) do not effect a transformation of a particular article to a different state; and (4) are not 2 We acknowledge that some of the considerations at Step 2A, Prong 2, properly may be evaluated under Part 2 of Alice framework (Step 2B of the Office revised guidance). For purposes of maintaining consistent treatment within the Office, we evaluate them under Part 1 of Alice framework (Step 2A of the Office revised guidance). See Revised Guidance, 84 Fed. Reg. at 55 n.25, 27–32. Appeal 2020-002501 Application 15/366,721 9 applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP §§ 2106.05(a)–(c), (e)–(h). In other words, the aforementioned additional elements (or combination of elements) recited in at least Appellant’s representative claim 1 do not integrate the judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong 2”). Appellant contends that claim 1 recites, in part, “‘performing at least one operation updating data contained within the digital object by executing, using a first processor, at least a first application contained within the digital object.’ Such logical structures and process improve the field of managing digital objects.” Appeal Br. 24. Appellant further contends that the “recited ‘digital object’ is analogous to the ‘self-referential table’ discussed in Enfish.” Id. at 24–25. We disagree with Appellant. The claims at issue in Enfish were directed to a specific type of data structure, i.e., a self-referential table for a computer database, designed to improve the way a computer carries out its basic functions of storing and retrieving data. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335– 36 (Fed. Cir. 2016). In rejecting a § 101 challenge, the court in Enfish held that “the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.” Id. at 1336. Here, Appellant is directing our attention to the claimed “digital object” and arguing that it resembles the inventive self-referential data structure at issue in Enfish, and likewise provides an improvement in the Appeal 2020-002501 Application 15/366,721 10 computer’s technical functionality. Although Appellant’s Specification indicates that “digital objects can be created to represent assets and, more particularly, ownership of assets. . . . Each digital object can contain data and one or more applications configured to maintain the data” (Spec. ¶ 15), claim 1 is merely directed to a computer system for requesting a transfer of the digital object, retrieving the digital object, updating the digital object, and communicating the digital object, as opposed to creating a data structure that improves the way a computer carries out its basic functions of storing and retrieving data. Appellant’s Specification also states: The digital objects are transferrable. For example, when an entity sells a real asset, that entity can transfer ownership of the digital object representing that asset to the entity to which the real asset is sold. Accordingly, the use of digital objects can simplify record keeping for such transactions. Moreover, owners of the digital objects can transfer management of the digital objects to digital object management systems of their choice. For example, an owner of various assets may choose to store their digital objects for those assets in a digital object management system of his/her bank. If the owner changes banks, the owner can transfer management of the digital objects to the new bank. Id. ¶ 16 (emphasis added). As emphasized above, Appellant’s Specification illustrates a method for simplifying record keeping for sales of real assets by allowing an entity to transfer ownership of the record, i.e., the digital object, representing that asset. As such, the claimed data structure, i.e., digital object, merely simplifies record keeping tasks, i.e., simplifies the transfer and storage of assets records. That is, here the arguably innovative technique of the appealed claims is inextricably a part of the abstract idea of collecting, Appeal 2020-002501 Application 15/366,721 11 manipulating, and storing data. See, e.g., Elec. Power Grp., 830 F.3d at 1353 (holding that “collecting information, analyzing it, and displaying certain results of the collection and analysis” are “a familiar class of claims ‘directed to’ a patent-ineligible concept”). Moreover, Appellant’s Specification fails to evidence any improvement to computer functionality. Also, nothing in the claims, understood in light of the Specification, requires anything other than an off-the-shelf, conventional processor used for collecting and processing/analyzing various information/data. See Spec. ¶ 90 (“These computer readable program instructions may be provided to a processor of a general purpose computer”). Therefore, unlike Enfish, the claims are directed not to an improvement in computer capabilities, such as managing digital objects, but rather the results of applying an abstract idea. Appellant further contends that the claimed invention is consistent with DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), because it “is rooted in computer technology in order to overcome a problem specifically arising in the realm of digital object management.” Appeal Br. 26. In DDR Holdings, the subject claim was held patent-eligible because it encompassed “an inventive concept” for resolving a “particular Internet- centric problem.” 773 F.3d at 1259. In contrast, we find Appellant’s method (claim 1) does not provide a solution “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” DDR Holdings, 773 F.3d at 1257. Because we find all claims on appeal merely use a generic computer or processor as a tool which is used in the way a computer normally functions, we conclude claims 1–20 fail to impart any discernible improvement upon Appeal 2020-002501 Application 15/366,721 12 the computer or processor, nor do Appellant’s claims solve “a challenge particular to the Internet” as considered by the court in DDR Holdings, 773 F.3d at 1256–57. Thus, we conclude none of Appellant’s claims are like the claim held patent-eligible by the court in DDR Holdings, in which the claimed invention was directed to the “challenge of retaining control over the attention of the customer in the context of the Internet,” such that: Instead of the computer network operating in its normal, expected manner by sending the website visitor to the third- party website that appears to be connected with the clicked advertisement, the claimed system generates and directs the visitor to the above-described hybrid web page that presents product information from the third-party and visual “look and feel” elements from the host website. DDR Holdings, 773 F.3d at 1258–59. Thus, we find unavailing Appellant’s arguments that the Examiner’s rejection “is inconsistent with the Federal Circuit’s decision in DDR Holdings” (Appeal Br. 26), given that no convincing “inventive concept” for resolving a “particular Internet-centric problem” is identified by Appellant. Consequently, we agree with the Examiner that the alleged improvement to the technical field appears to address the abstract idea itself. See Ans. 5. For at least the reasons noted supra, we determine that claim 1 (1) recites a judicial exception and (2) does not integrate that exception into a practical application. Thus, representative claim 1 is directed to the aforementioned abstract idea. Alice/Mayo—Step 2 (Inventive Concept) Step 2B identified in the Revised Guidance Turning to the second part of the Alice framework, we now look to whether claim 1 contains any “inventive concept” or adds anything Appeal 2020-002501 Application 15/366,721 13 “significantly more” to transform the abstract concept into a patent-eligible application. Alice, 573 U.S. at 216. As recognized by the Revised Guidance, an “inventive concept” under Alice step 2 can be evaluated based on whether an additional element or combination of elements: (1) adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or (2) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present. See Revised Guidance, 84 Fed. Reg. at 56; see MPEP § 2106.05(d). Appellant contends “claim 1 further recites ‘performing at least one operation updating data contained within the digital object by executing, using a first processor, at least a first application contained within the digital object. These limitations provide significantly more than the judicial exception.” Appeal Br. 20. Appellant further contends that “the Office Action has not established that each of the [aforementioned] limitations are widely prevalent or in common use in the relevant industry.” Id. at 21. To the contrary, the Examiner finds that “these additional elements are simply generic computer components, recited at a high level of generality such that they amount to no more than applying the abstract idea using a computerized system.” Ans. 8. The Court in Alice noted that “‘[s]imply appending conventional steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo] to supply an ‘inventive concept.”’ Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78–79). For example, Appellant’s Specification merely states that the “processor include, but are not limited to . . . ,” i.e., an open ended list of Appeal 2020-002501 Application 15/366,721 14 generic components. See Spec. ¶ 28. Additionally, Appellant’s Specification also states that “[t]hese computer readable program instructions may be provided to a processor of a general purpose computer.” Id. ¶ 90. Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (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.”). In other words, Appellant’s Specification merely discloses the additional elements at a high level of generality, which we find encompass generic components. Appellant also does not direct our attention to anything in the Specification that shows any specialized computer hardware or other “inventive” computer components are necessarily required. And even if they were considered under Part 2 of the Alice/Mayo framework rather than as part of the abstract idea, Appellant does not argue persuasively why the functions performed in the claims – receiving a message, retrieving the digital object, updating data, and communicating the digital object – are not routine, conventional, and well-known functions of a generic computer. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2015) (“[t]hat a computer receives and sends information over a network––with no further specification—is not even arguably inventive”); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016) (server that receives data, extracts classification information from the received data, and stores the digital images insufficient to add an inventive concept); Lending Tree, 656 F. App’x at 996 (“automating conventional activities using generic technology does not amount to an inventive concept”). Therefore, we find no element or combination of elements recited in Appellant’s claim 1 that contains any “inventive concept” or adds anything Appeal 2020-002501 Application 15/366,721 15 “significantly more” to transform the abstract idea into a patent-eligible concept. Appellant does not adequately explained how claim 1 is performed, such that it is not a routine and conventional function of a generic computer. Because Appellant’s independent claim 1 is directed to a patent- ineligible abstract idea, does not include additional elements that integrate the judicial exception into a practical application, and does not add a specific limitation beyond the judicial exception that is not “well-understood, routine, and conventional,” we sustain the Examiner’s rejection of the claims 1–20 under 35 U.S.C. § 101 as being directed to non-statutory subject matter in light of Alice, its progeny, and the Revised Guidance. Rejection under § 103(a) Appellant contends that “the ‘digital objects’ disclosed by Al-Masoud are not equivalent to Appellant’s claimed ‘digital object’” because “[r]ather than ‘representing an asset,’ Al-Masoud discloses that the ‘digital objects’ are associated with a second high income entity.” Appeal Br. 31 (citing Spec. ¶ 19). Appellant further argues that “Al-Masoud discloses that the ‘digital object’ are ‘digital objects’ that are being generated, not digital objects for which management responsibilities are being transferred as recited in claim 1.” Appeal Br. 32. Even if Al-Masoud’s digital object does not represent an asset and/or does not represent transfer of management responsibilities, as proffered by Appellant, we point out that the Examiner is relying on Rogel, not Al- Masoud, to teach these features. See Final Act. 11. The Examiner is merely relying on Al-Masoud to teach that it was known for “digital objects [to] Appeal 2020-002501 Application 15/366,721 16 include programmatic execution information,” i.e., an application. See Al- Masoud ¶ 30. Rogel discloses “[a]t least one digital media object (‘DMO’) or copy thereof is stored in one or more of those stores and is accessible by at least one of the first and second client digital data processors.” Rogel ¶ 33. Rogel further discloses “a transfer-ownership event, e.g., a request by the first client to sell the DMO and/or by the second client to buy the DMO.” Rogel ¶ 38. As such, Appellant aforementioned arguments are not only non- responsive to the Examiner’s actual findings in Rogel regarding these features, but Appellant’s arguments against Al-Masoud separately from Rogel also does not persuasively rebut the combination made by the Examiner. One cannot show non-obviousness by attacking references individually, where the rejections are based on combinations of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425–26 (CCPA 1981). Specifically, Appellant’s arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and, therefore, is ineffective to rebut the Examiner’s prima facie case of obviousness. See In re Keller, 642 F.2d at 425 (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”) (citations omitted). This reasoning is applicable here as the Examiner is not bodily Appeal 2020-002501 Application 15/366,721 17 incorporating Rogel’s method in Al-Masoud’s digital object, but rather is illustrating that the combined teachings of Rogel and Al-Masoud would have suggested to those of ordinary skill in the art updating data contained within the digital object by executing an application within that digital object. Further, Appellant contends that Al-Masoud’s method “is not equivalent to ‘performing at least one operation updating data contained within the digital object’” (Appeal Br. 32), and that Rogel “does not make up for this deficiency.” Id. We disagree with Appellant. Here, the Examiner finds, and we agree, that “Rogel teaches inserting the identification of the new owner into the metadata of the digital object” (see Final Act. 11), and we also highlight that this very same paragraph of Rogel teaches inserting watermarks into the DMO, which all illustrates updating a digital object. See Rogel ¶ 154 (“[I]dentifying marks of the new owner is inserted into the DMO metadata [and] special watermarks identifying this transaction and this service provided are inserted into the DMO itself.”). Also, as noted above, Al-Masoud teaches executing an application within the digital object. See Al-Masoud ¶ 30. As such, we find that Appellant fails to persuasively show that the combined teachings of Rogel and Al-Masoud do not teach and/or suggest the argued limitations. Accordingly, we sustain the Examiner’s rejection of claim 1. Appellant’s arguments regarding the Examiner’s rejection of independent claims 8 and 15 rely on the same arguments as for claim 1, and Appellant does not argue separate patentability for the dependent claims, except as noted below. We, therefore, sustain the Examiner’s rejection of claims 1–4, 6, 8–11, 13, 15–18, and 20. Appeal 2020-002501 Application 15/366,721 18 Claims 5, 7, 12, 14, and 19 Appellant contends that “[t]o combine the teachings of Al-Masoud with Dewolf . . . to arrive at the limitation . . . would change the operation of Al-Masoud’s ‘second executable program’ such that it does not perform the same function as it does separately.” Appeal Br. 36, 38. We view the aforementioned argument as a “bodily incorporation” type argument, given that Appellant is attempting to incorporate Dewolf’s teachings into the actual structure of Al-Masoud. However, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference,” but rather “what the combined teachings of those references would have suggested.” In re Keller, 642 F.2d at 425. Thus, we find that Appellant has not demonstrated error in the Examiner’s combination of the references to form the claimed invention. Accordingly, we sustain the Examiner’s rejection of claims 5, 7, 12, 14, and 19. CONCLUSION The Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101 because the claimed invention is directed to patent-ineligible subject matter is affirmed. The Examiner’s rejections of claims 1–20 as being unpatentable under 35 U.S.C. § 103 are affirmed. Appeal 2020-002501 Application 15/366,721 19 In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 101 Eligibility 1–20 1, 2, 8, 9, 15, 16 103 Rogel, Al-Masoud 1, 2, 8, 9, 15, 16 3, 4, 10, 11, 17, 18 103 Rogel, Al-Masoud, Wilson 3, 4, 10, 11, 17, 18 5, 12, 19 103 Rogel, Al-Masoud, Wilson, DeWolf 5, 12, 19 6, 7, 13, 14, 20 103 Rogel, Al-Masoud, Dettinger 6, 7, 13, 14, 20 Overall Outcome 1–20 No period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Copy with citationCopy as parenthetical citation