International Business Machines Corporation

Patent Trials and Appeals Board

Dec 18, 2020

2020002501 (P.T.A.B. Dec. 18, 2020)

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.
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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).
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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
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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.
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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.
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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.
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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.
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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.
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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
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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,
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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
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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
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“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
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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
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“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]
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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
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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