Minji Kim et al.

Patent Trials and Appeals Board

Sep 17, 2019

14546272 - (D) (P.T.A.B. Sep. 17, 2019)

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.
14/546,272 11/18/2014 Minji Kim MIT11-01CON1_14656 6628
110442 7590 09/17/2019
Anderson Gorecki LLP
2 Dundee Park, Suite 301A
Andover, MA 01810
EXAMINER
HOLDER, BRADLEY W
ART UNIT PAPER NUMBER
2439
NOTIFICATION DATE DELIVERY MODE
09/17/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
handerson@andersongorecki.com
jgorecki@smmalaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MINJI KIM, MURIEL MEDARD, and
ALI PARANDEHGHEIBI
____________

Appeal 2018-000862
Application 14/546,2721
Technology Center 2400
____________

Before JOHN A. JEFFERY, JUSTIN BUSCH, and CARL L. SILVERMAN,
Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–30, which constitute all pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We Affirm.

1 The real party in interest is identified as Massachusetts Institute of
Technology. Appeal Br. 2.

Appeal 2018-000862
Application 14/546,272
2
STATEMENT OF THE CASE
The invention relates to using advertisements (“appended content”) as
keys for streaming protected content. Abstract; Spec. 5:1–6:19, 8:3–9:24,
Figs. 1, 2. Claim 1, reproduced below, is exemplary of the subject matter on
appeal (emphasis added):

1. A computer-implemented method in which a computer
system performs operations comprising:
providing protected content to a user computer system, wherein
said protected content is encrypted; and
previously or contemporaneously or subsequently providing
appended content to the user computer system, wherein said appended
content comprises an advertisement, and wherein said appended
content functions as a decryption key for said protected content.

Appeal Br. 19 (Claims Appendix).

THE REJECTIONS
Claims 1–30 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to patent-ineligible subject matter. Final Act. 5–6.
Claims 1–3, 5–8, 10–12, 14–17, 19–21, and 23–26 are rejected under
pre-AIA 35 U.S.C. § 102(b) as being anticipated by Sidi et al. (US
2009/0083631 A1; pub. Mar. 26, 2009) (“Sidi”). Final Act. 6–13.
Claims 9, 18, 27–30 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Sidi and Radunovic et al. (US 2009/0003216 A1;
pub. Jan. 1, 2009) (“Radunovic”). Final Act. 13–16.
Claims 4, 13, and 22 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Sidi and Roach et al. (US 8,850,498 B1; iss. Sept.
30, 2014) (“Roach”). Final Act. 16–18.
Appeal 2018-000862
Application 14/546,272
3

ANALYSIS
The § 101 Rejection
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever 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, subject
to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “‘[l]aws of
nature, natural phenomena, and abstract ideas.’” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quotation marks and citation
omitted); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
70 (2012) (brackets in original).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. See Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77).
In accordance with that framework, we first determine what concept the
claim is “directed to.” See id. 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 in petitioners’ application explain the basic
concept of hedging, or protecting against risk.”).
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);
Appeal 2018-000862
Application 14/546,272
4
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191–92 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
Appeal 2018-000862
Application 14/546,272
5
patent-eligible application.” Alice, 573 U.S. at 221 (citation). “A claim that
recites an abstract idea must include ‘additional features’ to ensure ‘that the
[claim] is more than a drafting effort designed to monopolize the [abstract
idea].’” Id. (quoting Mayo, 566 U.S. at 77, (alteration in original)).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The United States Patent and Trademark Office (“USPTO”) recently
published revised guidance on the application of § 101. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Guidance”). Under that guidance, we first determine 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)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then 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.
See Guidance, 84 Fed. Reg. at 54–56.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. See Guidance,
Appeal 2018-000862
Application 14/546,272
6
84 Fed. Reg. at 54. When the judicial exception is so integrated, then the
claim is not directed to a judicial exception and is patent eligible under
§ 101. Id.
The § 101 Rejection of claims 1–30
In the Final Action, the Examiner determines the claims are ineligible
because they are directed to “a series of steps (i.e. provide protected content,
provide appended content) that may be performed by a single generic,
general purpose computer” and “[t]he claim(s) does/do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception because the claim is directed to an abstract idea with
additional generic computer elements which do not add a meaningful
limitation to the abstract idea because they would be routine in any single
generic computer implementation (i.e. provide protected content, provide
appended content).” Final Act. 5–6.
In the Answer, the Examiner additionally determines
Claims 1, 10, and 19 recites a method, medium and system for
providing protected content to a user, for which the user has to utilize
an appended advertisement as a decryption key for the protected
content. The claims 1, 10, and 19 reciting the steps of “providing
protected content to a user computer system”, “wherein said protected
content is encrypted”, “previously or contemporaneously or
subsequently providing appended content to the user computer
system”, “wherein said appended content comprises an
advertisement”, and “wherein said appended content functions as a
decryption key for said protected content” are directed to an abstract
idea as the claims describe an abstract idea of providing protected
content to a user, for which the user has to utilize an appended
advertisement as a decryption key for the protected content. The
concept described in claims 1, 10, and 19 is not meaningfully different
than those “series of steps” concepts found by the courts to be abstract
ideas, such as a method of distributing copyrighted material in
exchange for viewing an advertisement as described in the following
Appeal 2018-000862
Application 14/546,272
7
court case: (“the ordered combination of steps recites an abstract idea
and are not tied to any particular novel machine or apparatus”, see
Ultramercial Inc. v. Hulu LLC (Fed. Cir. 2014)).
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception because the
additional elements when considered both individually and as an
ordered combination do not amount to significantly more than the
abstract idea. It's noted that the claims recites “computer system”,
“storage medium”, “non-transitory memory”, “processor”,
“communications interface” and “interconnection mechanism”. Said
computer system, storage medium, non-transitory memory, processor,
communications interface and interconnection mechanism are recited
at a high level of generality and are recited as performing generic
computer functions routinely used in computer applications. Generic
computer components recited as performing generic computer
functions that are well-understood, routine, and conventional activities
amount to no more than implementing the abstract idea with a
computerized system. The use of generic computer components to
perform providing encrypted content and providing appended content
that functions as a decryption key does not impose any meaningful limit
on the computer implementation of the abstract idea. Thus, taken alone,
the additional elements do not amount to significantly more than the
above-identified judicial exception (the abstract idea). Therefore, the
claim is directed to non-statutory subject matter.

Ans. 3–6.
Appellants argue that the Examiner’s conclusion in the Final Action
does not present the required prima facie evidence. Appeal Br. 11–12.
Regarding the Answer, Appellants argue the Examiner incorrectly interprets
the claim to correspond to “the cited judicially established abstract idea of ‘a
method of distributing copyrighted material in exchange for viewing an
advertisement.’” Reply Br. 15. Appellants argue
that the rephrased claim language of “providing protected
content to a user, for which the user has to utilize an appended
advertisement as a decryption key for the protected content,” and the
Appeal 2018-000862
Application 14/546,272
8
actual claim language, are both distinct from the cited judicially
established abstract idea of “a method of distributing copyrighted
material in exchange for viewing an advertisement.” A key aspect of
distributing copyrighted material in exchange for viewing an
advertisement is assuring that the advertisement is actually viewed, i.e.,
verifying the “exchange.” Current state of the art techniques assure that
the advertisement is viewed by requiring sequential downloads, i.e.
downloading and playing the advertisement before the copyrighted
material can be downloaded. Such sequential downloading creates
annoying delays between presentation of the advertisement and
presentation of the copyrighted material.

The presently recited invention differs from, and improves upon, prior
art techniques by enabling the requested content, such as copyrighted
material, to be downloaded at any time with respect to download of the
advertisement. This improvement is possible because the
advertisement must be viewed in order to obtain the information
required to decode the requested content. Hence, the presently recited
invention helps to verify the “exchange” by assuring that the
advertisement is actually viewed. Moreover, the recited invention
advantageously accomplishes such verification of the exchange without
reliance on sequential downloads. In claim 1, for example, the
combination of providing encrypted protected content to a user
computer system, and previously or contemporaneously or
subsequently providing appended content to the user computer system,
wherein said appended content comprises an advertisement that
functions as a decryption key for said protected content, amounts to
significantly more than the alleged abstract idea because the recited
features eliminate the problematic requirement for sequential
downloading while assuring that the advertisement is presented.
Appellant therefore respectfully suggests that the pending claims recite
additional elements in combination that amount to significantly more
than the exception.
Appellant also respectfully suggests that the claims recite
eligible subject matter because the recited invention improves the
functioning of the user computer. A measure of the performance of a
computer is the responsiveness of its interfaces. Frustrating delays
between user input and computer response are indicators of poor
performance. The presently recited invention improves functioning
Appeal 2018-000862
Application 14/546,272
9
(performance) of the user computer by enabling the computer to present
requested and required content without annoying delays. Software
claimed in a patent that improves computer functioning is not “directed
to” an abstract idea under the first step of the Supreme Court's patent
eligibility test, according to the Federal Circuit.

Id. at 15–17 (footnote citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) omitted).
Regarding the alleged abstract idea of “a method of distributing
copyrighted material in exchange for viewing an advertisement as
described,” claim 1, whose body consists of only two clauses, recites in its
entirety:
1. A computer-implemented method in which a computer
system performs operations comprising:
providing protected content to a user computer system, wherein said
protected content is encrypted; and
previously or contemporaneously or subsequently providing appended
content to the user computer system, wherein said appended content
comprises an advertisement, and wherein said appended content functions
as a decryption key for said protected content.

Even if claim 1 recites an abstract idea, the Federal Circuit explains
the “directed to” inquiry is not simply asking whether the claims involve a
patent-ineligible concept:
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural
phenomenon—after all, they take place in the physical world.
See Mayo, 132 S.Ct. at 1293 (“For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.”). Rather, the “directed to”
inquiry applies a stage-one filter to claims, considered in light of
Appeal 2018-000862
Application 14/546,272
10
the specification, based on whether “their character as a whole is
directed to excluded subject matter.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); see
also Diehr, 450 U.S. at 188 (“In determining the eligibility of respondents’
claimed process for patent protection under § 101, their claims must be
considered as a whole.”); McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314 (Fed. Cir. 2016) (the question is whether the claims as a
whole “focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery”).
Alice/Mayo Step One
Given its sheer scope, breadth, and high level of generality, we
conclude that claim 1 is ineligible under § 101 in light of the USPTO’s
Revised Guidance and applicable legal precedent. In reaching this
conclusion, we first note that the claim recites a method and, therefore, falls
within the process category of § 101. But despite falling within this
statutory category, it must still be determined whether the claim is directed
to a judicial exception, namely an abstract idea. See Alice, 573 U.S. at 217.
To this end, it must be determined whether the claim (1) recites a judicial
exception, and (2) fails to integrate the exception into a practical application.
See Guidance, 84 Fed. Reg. at 52–55. If both elements are satisfied, the
claim is directed to a judicial exception under the first step of the Alice/Mayo
test. See id.
Although the Specification is helpful in illuminating what a claim is
“directed to,” when analyzing patent eligibility, reliance on the Specification
must always yield to the claim language when identifying the claimed
invention’s focus. ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759,
Appeal 2018-000862
Application 14/546,272
11
766 (Fed. Cir. 2019). Here, despite reciting that (1) the method is computer-
implemented in which a computer performs operations, and (2) providing
protected and appended content to a user computer system, all of claim 1’s
recited limitations, which collectively are directed to providing content to
decrypt other associated content, fit squarely within at least one of the
categories of abstract ideas in the USPTO’s guidelines.
Specifically, (1) providing protected content to a user . . . wherein
said protected content is encrypted; and (2) previously or
contemporaneously or subsequently providing appended content to the user
. . . wherein said appended content comprises an advertisement, and wherein
said appended content functions as a decryption key for said protected
content involves at least personal interactions, including following rules or
instructions, at least to the extent that a person could obtain this information
entirely mentally by merely reading pertinent records or other associated
information or writing this information down. Cf. CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (noting that
limitation reciting obtaining information about transactions that have used an
Internet address identified with a credit card transaction can be performed by
a human who simply reads records of Internet credit card transactions from a
pre-existing database). Alternatively, a person could obtain that information
by communicating with another person with such knowledge, such as a
merchant or colleague, or by writing this information down. Cf. id.; TLI
Commc’n, LLC v. AV Automotive, LLC, 823 F.3d 607, 610–14 (Fed. Cir.
2016) (holding ineligible claims reciting recording and administering digital
images including (1) recording images using a digital pick-up unit in a
telephone unit; (2) storing the recorded images; (3) transmitting data
Appeal 2018-000862
Application 14/546,272
12
including the images and classification information to a server; (4)
extracting the received classification information; and (5) storing the images
in the server considering that information); In re Salwan, 681 F. App’x 938,
939–41 (Fed. Cir. 2017) (unpublished) (holding ineligible claims reciting,
among other things, receiving medical records information and transmitting
reports where the claimed invention’s objective was to enable electronic
communication of tasks that were otherwise done manually using paper,
phone, and facsimile machine); Interval Licensing LLC v. AOL, Inc., 896
F.3d 1335, 1344 (Fed. Cir. 2018) (noting that a nontechnical human activity
of passing a note to a person who is in a meeting or conversation as
illustrating the invention’s focus, namely providing information to a person
without interfering with the person’s primary activity); LendingTree, LLC v.
Zillow, Inc., 656 F. App’x 991, 993–94, 996 (Fed. Cir. 2016) (unpublished)
(holding ineligible claims reciting, among other things, (1) receiving
selection criteria from lending institutions and credit data from a computer
user, and (2) forwarding the credit data to selected lending institutions as
directed to an abstract idea). Therefore, the recited providing limitations fall
squarely within the mental processes and methods of organizing human
activity categories of the agency’s guidelines and, therefore, recite an
abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing exemplary (1)
mental processes including observation and evaluation, and (2) methods of
organizing human activity, including personal interactions and following
rules or instructions).
We reach this conclusion notwithstanding the fact that the recited
protected content is encrypted, and the appended content functions as a
decryption key for the protected content. Notably, the claim lacks any
Appeal 2018-000862
Application 14/546,272
13
details as to the nature of the encryption scheme used to encrypt the
protected content, or any details regarding the nature of the corresponding
decryption scheme apart from the fact that appended content, which includes
an advertisement, (1) is provided at any time (i.e., previously,
contemporaneously, or subsequently with respect to providing the protected
content), and (2) functions, in some unspecified way, as a decryption key. In
other words, nothing in the claim precludes simple forms of encryption, such
as merely mapping one or more textual characters to one or more other
textual characters, and an associated decryption key—whenever such a key
is provided.
This simple encryption could be along the lines of the encryption
scheme noted in the definition of “encryption” in Barron’s Dictionary of
Computer and Internet Terms that, on page 168, gives a simple example of
encrypting letters of the alphabet by merely replacing a letter with one that is
10 places later in the alphabet so that “A” is replaced with “K,” “B” is
replaced with “L,” etc. See Douglas Downing et al., BARRONS’ DICTIONARY
OF COMPUTER & INTERNET TERMS 167–70 (10th ed. 2009).
For example, suppose an encryption scheme replaced certain letters of
the alphabet with numbers along the lines of the Barron’s dictionary
definition noted above, such that “S” is replaced with the number 5, “O”
with the number “0” (zero), etc. If a user is handed a piece of paper on
which the characters “U5PT0” are written, some users may not know what
this means, but when handed another piece of paper with the letter-to-
number mapping consistent with this encryption scheme, they could then use
this information as a key to decrypt the content “U5PT0” on the first piece
of paper by mentally replacing the “5” with an “S” and the “0” (zero) with
Appeal 2018-000862
Application 14/546,272
14
the letter “O” to yield the term “USPTO.” Some users may even be able to
perform this decryption without this specific mapping articulated on a piece
of paper, but rather just read an advertisement for the USPTO and mentally
associate the terms “U5PT0” and “USPTO” and their associated characters
to decrypt the first term by inspection and deduction. Similar examples
could also occur for other entities, whose names or other associated criteria
can be encrypted on a piece of paper by replacing one or more textual
characters with other characters, and then using a paper advertisement for
that entity to decrypt that encrypted information (e.g., the letter “I” can be
mapped to the numeral “1” so that “1BM” is an encrypted form of “IBM”,
where the term “1BM” could then be decrypted mentally using a separate
IBM paper advertisement). This simple example fully comports not only
with the ordinary and customary meaning of the term “encrypt” noted above,
but also the term “key” that is defined, quite broadly, as “the password or
other secret information needed to decode an encrypted message.” Id. at
273.
In another example, suppose a user was handed a piece of paper with
the abbreviation “USPTO” written on it. Some recipient users may not
know what “USPTO” stands for, but when provided another piece of paper
with “United States Patent and Trademark Office (USPTO)” written on it,
such as an advertisement for the USPTO, the user can then use this
information as a key to decrypt the content “USPTO” on the first piece of
paper.
These are just a few of numerous examples of simple content-based
encryption and decryption schemes encompassed by the claimed invention
given the sheer scope and breadth of the claim language. Ordinarily skilled
Appeal 2018-000862
Application 14/546,272
15
artisans could surely envision many more examples involving other such
schemes, whose possibilities are virtually unlimited. That the Federal
Circuit has held that encoding and decoding information are processes that
can—and have been—performed in the human mind, see Return Mail, Inc.
v. U.S. Postal Service, 868 F.3d 1350, 1368 (Fed. Cir. 2017), only
underscores that encryption and decryption (which merely encodes and
decodes information) are mental processes. See also RecogniCorp, LLC v.
Nintendo Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017) (determining the
claimed “method reflects standard encoding and decoding, an abstract
concept long utilized to transmit information.”). That encryption and
decryption processes are not even claimed here, but rather providing content
associated with those processes, only further underscores the abstract idea
recited in claim 1.
Although the claim recites an abstract idea based on these methods of
organizing activity and mental processes, it must still be determined whether
the abstract idea is integrated into a practical application, namely whether
the claim applies, relies on, or uses the abstract idea in a manner that
imposes a meaningful limit on the abstract idea, such that the claim is more
than a drafting effort designed to monopolize the abstract idea. See
Guidance, 84 Fed. Reg. at 54–55. To this end, it must be determined (1)
whether there are any additional recited elements beyond the abstract idea,
and, if so, (2) those elements must be evaluated individually and collectively
to determine whether they integrate the exception into a practical
application. See id.
Here, the fact that the recited method is (1) computer-implemented in
which a computer performs operations, and (2) provides protected and
Appeal 2018-000862
Application 14/546,272
16
appended content to a user computer system are the only recited elements
beyond the abstract idea, but those additional elements do not integrate the
abstract idea into a practical application when reading claim 1 as a whole.
First, we are not persuaded that the claimed invention improves a computer
or its components’ functionality or efficiency, or otherwise changes the way
those devices function, at least in the sense contemplated by the Federal
Circuit in Enfish LLC v. Microsoft Corporation, 822 F.3d 1327 (Fed. Cir.
2016). The claimed self-referential table in Enfish was a specific type of
data structure designed to improve the way a computer stores and retrieves
data in memory. Enfish, 822 F.3d at 1339. To the extent Appellants
contend that the claimed invention uses such a data structure to improve a
computer’s functionality or efficiency, or otherwise change the way that
device functions, there is no persuasive evidence on this record to
substantiate such a contention.
To the extent that Appellants contend that the claimed invention is
rooted in technology because it is ostensibly directed to a technical solution,
we disagree. Even assuming, without deciding, that claimed invention can
provide protected and appended content to a user faster or more efficiently
than doing so manually, any speed or efficiency increase comes from the
capabilities of the generic computer components—not the recited process
itself. See FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095
(Fed. Cir. 2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co.,
687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required
calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter.”); see
also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F. App’x 1012,
Appeal 2018-000862
Application 14/546,272
17
1017 (Fed. Cir. 2017) (unpublished) (“Though the claims purport to
accelerate the process of finding errant files and to reduce error, we have
held that speed and accuracy increases stemming from the ordinary
capabilities of a general-purpose computer do not materially alter the patent
eligibility of the claimed subject matter.”). Like the claims in FairWarning,
the focus of claim 1 is not on an improvement in computer processors as
tools, but on certain independently abstract ideas that use generic computing
components as tools. See FairWarning, 839 F.3d at 1095 (citations and
quotation marks omitted).
Nor is this invention analogous to that which the court held eligible in
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016). There, the claimed process used a combined order of specific
rules that rendered information in a specific format that was applied to create
a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques—an improvement over manual three-
dimensional animation techniques that was not directed to an abstract idea.
Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here merely uses generic computing components to provide
content to decrypt other associated content. This generic computer
implementation is not only directed to organizing human activity and mental
processes, but also does not improve a display mechanism as was the case in
McRO. See SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir.
2018) (distinguishing McRO).
Appeal 2018-000862
Application 14/546,272
18
Nor is this a case involving eligible subject matter as in DDR
Holdings, LLC v. Hotels.Com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). There,
instead of a computer network operating in its normal, expected manner by
sending a website visitor to a third-party website apparently connected with
a clicked advertisement, the claimed invention in DDR generated and
directed the visitor to a hybrid page that presented (1) product information
from the third party, and (2) visual “look and feel” elements from the host
website. DDR, 773 F.3d at 1258–59. Given this particular Internet-based
solution, the court held that the claimed invention did not merely use the
Internet to perform a business practice known from the pre-Internet world,
but rather was necessarily rooted in computer technology to overcome a
problem specifically arising in computer networks. Id. at 1257.
That is not the case here. As noted previously, Appellants’ claimed
invention, in essence, provides content to decrypt other associated content
—albeit by using a computer to achieve that end. The claimed invention
here is not necessarily rooted in computer technology in the sense
contemplated by DDR where the claimed invention solved a challenge
particular to the Internet. Although Appellants’ invention uses a computer,
the claimed invention does not solve a challenge particular to the computer
that is used to implement this functionality.
In short, although the recited steps may be beneficial by providing
content to decrypt other associated content, a claim for a useful or beneficial
abstract idea is still an abstract idea. See Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379–80 (Fed. Cir. 2015).
Therefore, we conclude that claim 1 is directed to an abstract idea.

Appeal 2018-000862
Application 14/546,272
19
Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim 1’s additional recited elements,
namely that the recited method (1) is computer-implemented in which a
computer performs operations, and (2) provides protected and appended
content to a user computer system—considered individually and as an
ordered combination—do not provide an inventive concept such that these
additional elements amount to significantly more than the abstract idea. See
Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56. As noted
above, the claimed invention merely provides content to decrypt other
associated content using generic computing components whose generic
computing functionality is well-understood, routine, and conventional.
Accord Ans. 4–5 (noting this point); see also Spec. 3–4, 9–14 (describing
generic computer components used to implement the disclosed invention).
Given the claimed invention’s high level of generality, the additional
recited elements do not add significantly more than the abstract idea to
provide an inventive concept under Alice/Mayo step two. To the extent
Appellants contend otherwise, we disagree.
In conclusion, the additional recited elements—considered
individually and as an ordered combination—do not add significantly more
than the abstract idea to provide an inventive concept under Alice/Mayo step
two. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and independent claims 10 and 19, which are commensurate in
scope with claim 1, as ineligible under § 101. Appellants do not present
arguments regarding dependent claims 2–9, 11–18, and 20–30, and based on
the record before us, we are not persuaded of Examiner error.
Appeal 2018-000862
Application 14/546,272
20
Therefore, we sustain the rejection of claims 1–30 under 35 U.S.C.
§ 101.

The § 102 rejection of claims 1–3, 5–8, 10–12, 14–17, 19–21,
and 23–26

Appellants argue that the Examiner errs because Sidi’s gating and
protected segments do not disclose the claim 1 limitations and does not
provide a solution to the problem of delayed downloading. Appeal Br. 12–
13; Reply Br. 17–19.
In the Final Action, the Examiner finds that Sidi discloses the claim 1
limitations, including “previously or contemporaneously or subsequently
providing appended content to the user computer system, wherein said
appended content comprises an advertisement, and wherein said appended
content functions as a decryption key for said protected content” (also
referred to as “disputed limitation”). Final Act. 6–7 (citing Sidi ¶ 41:1–3,
12–15, ¶ 85:1–10).
In the Appeal Brief, Appellants argue Sidi’s gating segment must be
viewed in order to view the protected segments and Sidi does not recognize
the problem of delayed downloading, nor provide a solution to the problem.
Appeal Br. 13. Appellants argue Sidi does not teach “providing both an
encrypted protected segment and a gating segment advertisement that
functions as a decryption key to a user computer system.” Id. According to
Appellants, “Sidi describes a technique for measuring user engagement
during presentation of media content. A media content player application
includes ‘gating segments’ and ‘protected segments.’ The gating segments
must be viewed in order to view the protected segments.” Id. at 12–13.
Appeal 2018-000862
Application 14/546,272
21
In the Answer, the Examiner finds
Sidi et al. clearly teaches providing protected content to a
user computer system (Sidi et al. Paragraph 40 Lines 1-3 teaches
the providing of protected media content segments to a user at a
computer system in a controlled fashion so that access to the
content by the user can be controlled), wherein said protected
content is encrypted (Sidi et al. Paragraph 85 Lines 1-2 teaches
that these protected content segments are encrypted), and
previously or contemporaneously or subsequently providing
appended content to the user computer system (Sidi et al.
Paragraph 41 Lines 1-3 teaches the providing of appended
gating media content segments contemporaneously (defined by
Merriam-Webster as existing, occurring, or originating during
the same time) or at the same time), wherein said appended
content comprises an advertisement (Sidi et al. Paragraph 41
Lines 10-15 teaches that these appended gating media content
segments include an advertisement directed to the user which
must be viewed by the user in order to have access to the
associated protected segment), and wherein said appended
content functions as a decryption key for said protected content
(Sidi et al. Paragraph 85 Lines 1-10 teaches that these appended
gating media content segments also include an embedded
encryption key that is utilized in decrypting the protected content
segments). Thereby clearly anticipating the limitations of Claims
1, 10, 19 as argued by the appellant.

Ans. 6.

According to the Examiner, regarding Appellants’ argument that “the
references fail to show certain features of applicant’s invention, . . . the
features upon which applicant relies (i.e., ‘that Sidi fails to provide a
solution to, or even acknowledge the existence of, the problem of delaying
download of requested content until an advertisement has been viewed’) are
not recited in the rejected claim(s).” Id. at 7. The Examiner states that
“[a]lthough the claims are interpreted in light of the specification, limitations
Appeal 2018-000862
Application 14/546,272
22
from the specification are not read into the claims.” See In re Van Geuns,
988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).” Id.
In the Reply Brief, Appellants reiterate their arguments that Sidi
teaches the prior art sequential download technique that leads to annoying
delays between an advertisement and a corresponding video and “[i]n all
embodiments Sidi relies on sequential download of the gating segment
before the associated protected segment.” Reply Br. 17–18 (emphasis
added). Regarding the Examiner’s finding that Sidi teaches downloading
gating segments contemporaneously with protected segments, Appellants
argue that the cited Sidi portions do not teach the order in which the
segments are downloaded. Id. at 18. According to Appellants, Sidi teaches
the order is a temporal progression in which “sequential protected segments
102 ... are preceded by associated gating segments 104.” Id. at 18 (citing
Sidi ¶¶ 58, 59). Appellants argue the Examiner errs in finding the solution
to the delayed download problem is not recited in the claim because “[c]laim
1, for example, recites ‘providing protected content’ to a user computer
system, previously or contemporaneously or subsequently ‘providing
appended content’ to the user computer system, wherein said appended
content comprises an advertisement, and wherein said appended content
functions as a decryption key for said protected content” (emphasis added).
Id. at 19.
We are not persuaded by Appellants’ arguments because one of
ordinary skill in the art would understand the plain language of the claim to
apply to the disclosure of Sidi cited by the Examiner. In particular, the
limitation “previously or contemporaneously or subsequently” (emphasis
added) is understood to encompass any one of “previously,”
Appeal 2018-000862
Application 14/546,272
23
“contemporaneously,” or “subsequently.” Claim terms in a patent
application are given the broadest reasonable interpretation consistent with
the Specification, as understood by one of ordinary skill in the art. In re
Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004). See Spec. 13:26–14:13
Therefore, we sustain the rejection of claim 1, independent claims 10
and 19 which recite the disputed limitation, and dependent claims 11, 12, 14,
17, 20, 21, 23, and 26 as these claims are not argued separately.
Dependent claims 2, 3, 5– 8, 15, 16, 24, and 25
Claim 2 recites “[t]he method of claim 1 comprising previously or
contemporaneously or subsequently providing appended content that has
been network coded by using coding coefficients.” The Examiner identifies
Sidi’s employment of MPEG 4 to meet this limitation (“appended content
described as a ‘gating media content segment’ is transmitted utilizing
network coded communication protocols that further use network coded data
coding schemes including MPEG 4 for encoding of data packets or segments
which require the use of coding coefficients as part of the chosen network
coded data encoding scheme”). Final Act. 7 (citing Sidi ¶¶ 41:1–3, 44:7–12,
17:7–11, 50:3–6). In the Answer, the Examiner notes that the term “network
coded” is not clearly defined in the Specification and
Sidi et al. Paragraph 49 has Internet Protocol which is a protocol
for communication over a network. Packets must be coded in the
protocol's format else they will not propagate through the network.
MPEG4 is sent via the IP network and MPEG4 uses coding coefficients
by the coding of quantized transform coefficients. MPEG4 is a
compression algorithm that reduces bandwidth. The combination of IP
and MPEG4 teach network coded by using coding coefficients. The
way Claim 2 is presently written the words network coded have a very
broad meaning, since they are common industry terms that can mean
something as simple as the coding of a network message to contain
private data embedded in an industry standard networking protocol. In
Appeal 2018-000862
Application 14/546,272
24
this case utilizing something as simple as MPEG 4, as described above,
is an example. Appellant could amend network coded to more
accurately reflect the specification and the meaning that appellant
intends. Thereby Sidi et al. clearly anticipates the limitations of Claim
2 as argued by the appellant.

Ans. 8–9.
Appellants argue that compression formats such as MPEG 4 are not
equivalent to network coding using coding coefficients, descriptions of
network coding can be found in the specification, and MPEG 4 is not
even a transmission protocol. Appeal Br. 14 (citing Spec. 6–8). In the
Reply Brief, Appellants argue
that network coding is a term of art. Moreover, it is stated at page
7, lines 25-26 that “it is important to note that in order to decode the
content, a node needs to perform Gaussian-elimination on the coding
coefficients.” Linear network coding uses that principle; MPEG 4 does
not.

Reply Br. 20.
Based on the record before us, we are not persuaded by Appellants’
arguments. The Examiner’s findings are reasonable, and Appellants’
rebuttal is conclusory and based on attorney arguments. Mere attorney
arguments and conclusory statements that are unsupported by factual
evidence are entitled to little probative value. See In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984); Ex parte Belinne, Appeal 2009-004693, 2009 WL 2477843, at *3–4
(BPAI Aug. 10, 2009) (informative).
Claim 3 recites “[t]he method of claim 1 comprising providing said
protected content from at least one of a group consisting of a server and a
peer and comprising previously or contemporaneously or subsequently
Appeal 2018-000862
Application 14/546,272
25
providing appended content from one of a server and a peer.” The Examiner
finds Sidi teaches receiving protected content from a server, as discussed
supra, regarding claim 1. Final Act. (citing Sidi ¶¶ 53:5–6); Ans. (citing
Sidi ¶ 53). Appellants argue Sidi provides no indication the media content is
encrypted. Appeal Br. 14; Reply Br. 20.
We are not persuaded by Appellants’ arguments because Sidi
expressly describes that the protected content (“protected segments”) and the
appended content (“gating segment”) are encrypted. Sidi ¶ 85.
Claim 5 recites “[t]he method of claim 1 comprising encrypting all of
said network coded appended content.” In the Final Action, the Examiner
notes the lack of antecedent for “network coded appended content” and
chose to construe the term in this claim to refer to “protected content
network coded data.” Final Act. 8. In the Answer, the Examiner states that
“[r]egardless of what was construed by the Examiner . . . , Sidi ‘teaches that
all data of network coded appended content is encrypted, since the protected
segments (which are network coded based on being part of a network coded
Internet Protocol packet) are both appended to the Internet Protocol packet
and are encrypted.’” Ans. 10 (citing Sidi ¶ 85:1–10).
Appellants argue that the Examiner’s Final Action misinterprets the
network coded appended content to be network coded protected content and
Sidi does not teach encryption of a gating segment that functions as a
decryption key. Appeal Br. 15; Reply Br. 20–21.
We are not persuaded by Appellants’ arguments because Sidi teaches
that all of the data is encrypted and, as discussed supra regarding claim 1,
the appended content functions as a decryption key for the protected content.
Appeal 2018-000862
Application 14/546,272
26
Claim 6 recites “[t]he method of claim 1 comprising selecting
appended content from a plurality of instances of appended content based on
user information.” We are persuaded by Appellants’ argument that the
Examiner errs because, although Sidi describes an advertisement (appended
content), the portion of Sidi relied upon by the Examiner does not describe
the claimed “selecting appended content from a plurality of instances of
appended content based on user information.” Sidi ¶ 41; Appeal Br. 15;
Reply Br. 21; Final Act. 8; Ans. 11. Therefore, on the record before us, we
do not sustain the rejection. Although Appellants do not argue dependent
claims 7, 15, 16, 24, and 25 separately, these claims recite commensurate
limitations as claim 6 and, therefore, we also do not sustain the rejection of
these claims.
Claim 8 recites “[t]he method of claim 1 comprising receiving
protected content that has been network coded.” The Examiner and
Appellants’ positions are similar to the discussion of similar claim 2,
discussed supra. Appeal Br. 15; Reply Br. 21–22; Final Act 9; Ans. 12.
For the same reasons, we are not persuaded by Appellants’ arguments and,
therefore, we sustain the rejection.
In view of the above, we sustain the rejection of dependent claims 2,
3, 5, and 8, and do not sustain the rejection of claims 6, 7, 15, 16, 24, and 25.
The § 103 rejections
Dependent claims 9, 18, and 27–30 over Sidi and Radunovic
Appellants rely on the asserted allowability of the independent claims
1, 10, 19, discussed supra. Appeal Br. 16; Reply Br. 22. Because we
determined the independent claims are unpatentable over Sidi under § 102,
and the Examiner’s findings and conclusions regarding the rejection of these
Appeal 2018-000862
Application 14/546,272
27
dependent claims under § 103 over Sidi and Radunovic are reasonable and
not rebutted, we sustain the rejection of dependent claims 9, 18, and 27–30.
Dependent claims 4, 13, and 22 over Sidi and Roach
Claims 4, 13, and 22 recite “encrypting only said coding coefficients
used to code said network coded appended content.”
The Examiner finds that Roach teaches “a system and a method of
network coding in which only the coding coefficients utilized in the network
coding of appended or additional content are encrypted in order to
implement a light encryption structure by only encrypting the coding
coefficients versus encrypting the entire network coded packet stream.”
Final Act. 17 (citing Roach, 5:49–55, 60–65). The Examiner finds that one
of ordinary skill in the art would have combined the teachings of Sidi
(encrypting entire stream) and Roach (light encryption) “so as to provide a
more efficient and less processor intensive way of utilizing encryption to
secure a network coded packet stream.” Final Act. at 18; see also Ans. 14–
16 (“the motivation to combine is to provide a more efficient and secure way
of recovering original data packets.”)
Appellants argue the Examiner misinterprets appended content for
protected content as in the rejection of claim 5, and there is no mention in
Roach of network coding or encryption of coefficients. Appeal Br. 16–17.
Appellants argue the Examiner’s motivation to combine Sidi and Roach is
inadequate. Id. In the Reply Brief, Appellants argue
In the Examiner's Answer the Examiner argues that
column 6, lines 49-55 and 60-65 of Roach clearly teach
encrypting only the coding coefficients used to code said
network coded appended content. Appellant disagrees. The
cited passages teaches that the most significant coefficients of a
video compression format are encrypted. Roach’s coefficients
Appeal 2018-000862
Application 14/546,272
28
are not decryption keys for network coded protected content. As
already indicated above, the interpretation of the pending claims
as reciting video and audio file formats such as MPEG 4 is
inconsistent with the specification.

Reply Br. 23–24.
We are not persuaded by Appellants’ arguments and agree, instead,
with the findings and conclusions of the Examiner. Both Sidi and Roach
teach encrypting appended content and protected content, as discussed supra
regarding claim 1. Roach additionally teaches light encryption. As in our
discussion of claim 2, supra, based on the record before us, the Examiner’s
findings and conclusions are reasonable and Appellants’ arguments are
insufficient.
Appellants also argue an unreasonably narrow teaching of the cited
references and an overly demanding standard of obviousness.
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.
Keller, 642 F.2d 413, 425 (CCPA 1981).
Here, the Examiner provides sufficient evidence as required for
obviousness. As stated by the Supreme Court, the Examiner’s obviousness
rejection must be based on:
[S]ome articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness. . . . [H]owever, the
analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
Appeal 2018-000862
Application 14/546,272
29
take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner’s findings are reasonable because the skilled artisan
would “be able to fit the teachings of multiple patents together like pieces of
a puzzle” because the skilled artisan is “a person of ordinary creativity, not
an automaton.” KSR, 550 U.S. at 420–21.
Based upon the teachings of the references and the fact that each
claimed element was well known in the art, we agree with the Examiner
because the combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.
Id. at 415–16. We note Appellants present no persuasive arguments that the
results are unpredictable. Moreover, as discussed supra, the Examiner
additionally provided reasons why one of ordinary skill in the art would
have combined the references in the manner suggested.
On this record, Appellants do not present sufficient or persuasive
evidence that the combination of the cited references was “uniquely
challenging or difficult for one of ordinary skill in the art” or “represented an
unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price,
Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419–21
Therefore, we sustain the rejection of claims 4, 13, and 22.

DECISION
We affirm the Examiner’s decision rejecting claims 1–30 under 35
U.S.C. § 101.
Appeal 2018-000862
Application 14/546,272
30
We affirm the Examiner’s decision rejecting claims 1–3, 5, 8, 10–12,
14, 17, 19–21, 23, and 26 under 35 U.S.C. § 102.
We reverse the Examiner’s decision rejecting claims 6, 7, 15, 16, 24
and 25 under 35 U.S.C. § 102.
We affirm the Examiner’s decision rejecting claims 4, 9, 13, 18, 22,
and 27–30 under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED