Ryan Jacob. Shapiro

Patent Trials and Appeals Board

Dec 20, 2019

13783863 - (D) (P.T.A.B. Dec. 20, 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.
13/783,863 03/04/2013 Ryan Jacob SHAPIRO SEC-P175US 1251
74243 7590 12/20/2019
Fogarty LLP
P.O. Box 703695
Dallas, TX 75370-3695
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
12/20/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@fogartyip.com
pair@fogartyip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RYAN JACOB SHAPIRO
Appeal 2018-006256
Application 13/783,863
Technology Center 3600
Before JAMES R. HUGHES, ERIC S. FRAHM, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–3, 7–9, 12–15, and 17–26. Claims
4–6, 10, 11, and 16 have been canceled. See Final Act. 1–2.2 We have
jurisdiction under 35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Securus
Technologies, Inc. See Appeal Br. 3.
2 We refer to Appellant’s Specification (“Spec.”), filed Mar. 4, 2013
(claiming benefit of US 12/814,201 (filed June 11, 2010), US 11/041,431
(filed Jan. 21, 2005), and US 60/538,933 (filed Jan. 22, 2004); Appeal Brief
(“Appeal Br.”), filed Dec. 15, 2007; and Reply Brief (“Reply Br.”), filed
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We AFFIRM.
CLAIMED SUBJECT MATTER
The invention relates generally “to the field of electronic
communications,” and specifically, “to the delivery and access of electronic
data by individuals in a restrained environment, such as correctional
facility.” Spec. 1:11–13;3 see Spec. 2:6–4:24; Abstract. Claims 1, 12, and
20 are independent. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A system for managing an exchange of digital
content between inmates in a correctional facility and non-
inmates, comprising:
at least one computer server having a processor and
connected to software stored on non-transitory media, the server
software configured to:
receive digital content for distribution to an
intended inmate of the correctional facility,
authenticate a requesting inmate requesting
distribution of the digital content to an inmate device
associated with a unique identifier, wherein the requesting
inmate is authenticated as the intended inmate;
determine whether the inmate device is registered to
the authenticated requesting inmate based on the unique
identifier of the inmate device; and
distribute, to the inmate device, the digital content
and license information authorizing use of the digital

May 29, 2018. We also refer to the Examiner’s Final Office Action (“Final
Act.”), mailed June 23, 2017; and Answer (“Ans.”) mailed Mar. 28, 2018.
3 Appellant references the Specification by paragraph number. See, e.g.,
Appeal Br. 3–5. It appears Appellant cites to the published Application (US
2013/0179949 A1, published July 11, 2013). We reference the present
Application as originally filed (on Mar. 4, 2013), which does not include
paragraph numbers.
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content by the authenticated requesting inmate using the
registered inmate device; and
the inmate device registered to the requesting inmate, the
registration based on the unique identifier associated with the
inmate device, and the inmate device having a processor, a digital
display, and controls, the inmate device including software
stored on non-transitory media, the software configured to;
connect to the at least one computer server and
provide information used to authenticate the requesting
inmate and further provide the unique identifier;
receive the digital content distributed by the at least
one server and determined to be intended for the
requesting inmate, wherein the digital content includes the
license information authorizing use of the content by the
requesting inmate on the inmate device; and
store the license information in a secure key locker
located on the inmate device, wherein the license
information is bound to the requesting inmate device
based on the unique identifier associated with the inmate
device.
Appeal Br. 24–25 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Mow US 6,668,045 B1 Dec. 23, 2003
Sidler et al. (“Sidler”) US 7,860,222 B1 Dec. 28, 2010 (filed
June 30, 2006)
Ringewald US 8,364,595 B1 Jan. 29, 2013 (filed
May 5, 2009)
Zhang et al. (“Zhang”) US 2007/0282751 A1 Dec. 6, 2007
Rae et al. (“Rae”) US 2008/0057976 A1 Mar. 6, 2008
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REJECTIONS4, 5
1. The Examiner rejects claims 1–3, 7–9, 12–15, and 17–26 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. See
Final Act. 5–25.
2. The Examiner rejects claims 1–3, 7–9, 12, 17–20, 24, and 25
under 35 U.S.C. § 103(a) as being unpatentable over Mow, Rae, and Zhang.
See Final Act. 25–68.
3. The Examiner rejects claims 13–15 and 21–23 under 35 U.S.C.
§ 103(a) as being unpatentable over Mow, Rae, Zhang, and Sidler. See Final
Act. 68–76.

4 See Footnote 2 (supra). The Examiner finds that US 11/041,431 (filed Jan.
21, 2005), and US 60/538,933 (filed Jan. 22, 2004), to which Appellant
claims benefit with respect to Appellant’s effective filing date, fail to
provide adequate support for certain claim features. See Final Act. 2–5. The
Examiner further finds that US 12/814,201 (filed June 11, 2010), also fails to
provide adequate support for certain claim features. See Final Act. 2–5.
Accordingly, the Examiner concludes that the earliest effective filing date of
claims 1–3, 8, 9, 12–14, and 18–26 is June 11, 2010, and that the earliest
effective filing date of claims 7, 15, and 17 is March 4, 2013. See Final Act.
5. Appellant does not address the Examiner’s findings and conclusions with
respect to the effective filing date of the claims, nor does Appellant address
the effective date of the cited prior art. Instead, Appellant argues the merits
of the prior art rejections. See Appeal Br. 17–22. In view of the Examiner’s
undisputed findings and conclusions, we do not review the Examiner’s
findings and conclusions regarding the effective filing date of the claims.
5 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284 (2011), amended 35 U.S.C. § 103, e.g., to rename 35 U.S.C.
§ 103’s subsections. The Examiner has determined the effective filing date
of the present application is, at the latest, March 4, 2013. See Footnote 3
(supra). Because the present application has an effective filing date prior to
the AIA’s effective date for applications (March 16, 2013), this decision
refers to the pre-AIA versions of 35 U.S.C. § 103, i.e., § 103(a).
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4. The Examiner rejects claim 26 under 35 U.S.C. § 103(a) as
being unpatentable over Mow, Rae, Zhang, and Ringewald. See Final Act.
77–79.
OPINION
Subject Matter Eligibility—35 U.S.C. § 101
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 77–80 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 573 U.S. at 217. The
framework requires us first to consider “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217.
If so, we then examine “the elements of [the] claim both individually and ‘as
an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Alice,
573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). That is, we examine the
claim for an “inventive concept,” “an element or combination of elements
that is ‘sufficient to ensure that the patent in practice amounts to
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significantly more than a patent upon the [ineligible concept] itself.’” Alice,
573 U.S. at 217–18 (alteration in original) (quoting Mayo, 566 U.S. at 72–
73).
The Patent Office recently published revised guidance concerning this
framework and the application of § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(hereinafter “2019 Revised Guidance”). Under that guidance, we first look
to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people) (hereinafter
“Step 2A, prong 1”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h))
(hereinafter “Step 2A, prong 2”).6
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55.
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 2019
Revised Guidance, 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 35 U.S.C. § 101. See 2019 Revised Guidance, 84 Fed. Reg.
at 54.

6 All references to the MPEP are to the Ninth Edition, Revision 08-2017
(rev. Jan. 2018).
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Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18.
For example, we 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.7
See 2019 Revised Guidance, 84 Fed. Reg. at 56. With these principles in
mind, we turn to the merits of the § 101 rejection. The Examiner rejects
Appellant’s claims 1–3, 7–9, 12–15, and 17–26 as being directed to patent-
ineligible subject matter. See Final Act. 5–25; Ans. 3–8. Appellant does not
separately argue the claims with specificity and, instead, argues claims 1–3,
7–9, 12–15, and 17–26 together for this rejection. See Appeal Br. 8–17.
Accordingly, we address the Examiner’s rejection of independent claim 1
and the claims not separately argued by Appellant as a group based on claim
1, as permitted by 37 C.F.R. § 41.37(c)(1)(iv).
Statutory Subject Matter
Claim 1 recites a “system” (infra). Appellant’s “system” uses at least
one computer server including a processor and an inmate device including a
processor to implement a number of functions. See claim 1 (Appeal Br. 24–

7 Items (3) and (4) are collectively referred to as “Step 2B” hereinafter and
in the 2019 Revised Guidance.
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25 (Claims App.)). Accordingly, we analyze Appellant’s system as a
process, which is a statutory category of invention (subject matter)
(USPTO’s Step 1).
Abstract Idea
The Examiner rejects Appellant’s claim 1 as being directed to patent-
ineligible subject matter. See Final Act. 5–25; Ans. 3–8. Specifically, the
Examiner concludes “the claims are directed towards the abstract idea of
data management in a correctional facility, . . . specifically, monitoring the
exchange of digital content in order to determine whether a recipient is
allowed to receive the digital content.’” Final Act. 6; see Final Act. 6–18;
Ans. 4–8. More specifically, the Examiner rejects claim 1 because the claim
merely recites the “recognized abstract ideas of comparing information and
using rules to identifying options, . . . in order to determine . . . whether a
recipient is allowed to view the content” (Final Act. 6), which amount to
mental processes similar to Electric Power Group (Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)) and SmartGene (SmartGene,
Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950 (Fed. Cir. 2014)).
See Final Act. 6, 11–12, 19–20; Ans. 7–8. The Examiner also concludes
“that the concept of distributing licensing information and storing the
information in a secure location” in a “device’s storage” (Final Act. 7) is not
a technological improvement, but instead “rel[ies] on the use of a generic
computing device to perform the abstract idea of data management” (Final
Act. 18) similar to TLI Communications (In re TLI Commc’ns LLC Patent
Litig., 823 F.3d 607 (Fed. Cir. 2016)). See Final Act 7–19; Ans. 7–8.

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Appellant contends the Examiner erred in rejecting the claims as
being directed to patent-ineligible subject matter. See Appeal Br. 8–17;
Reply Br. 2–11. Specifically, Appellant contends, with respect to the first
step of the Alice analysis, that the Examiner improperly interpreted the
claims (in particular claim 1), and that claim 1 “is directed at a system of
two interoperating hardware devices[,] a server and an inmate device[,] . . . .
[that] addresses particular security challenges posed by distributing digital
content to personal devices assigned to inmates of a controlled-environment
facility.” Reply Br. 2; see Appeal Br. 8–12; Reply Br. 2–6. Appellant
further contends the Examiner’s interpretation does not account for “binding
of license information to an inmate device” (Appeal Br. 9–10), “distribution
of digital content to a specific inmate device that has been registered to an
inmate” (Appeal Br. 10), and “storage of license information in a secure key
locker” (Appeal Br. 10). Appellant also contends claim 1 is (and the other
pending claims are) “directed to an improvement to the relevant technology”
in that claim 1 “recites a system that addresses a specific technological
problem” of “preventing illicit sharing or other unauthorized use of digital
content that is distributed to personal devices used by residents of
controlled-environment facilities” (Appeal Br. 12), similar to the claims in
DDR Holdings (DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014)). See Appeal Br. 12–16; Reply Br. 7–8. In addition,
Appellant contends the Examiner misapplied SmartGene, and claim 1 recites
devices that “cannot be fairly characterized as merely implementing ‘mental
steps’” (Appeal Br. 17). See Appeal Br. 16–17; Reply Br. 8–10.
For the reasons discussed below, we conclude Appellant’s claim 1
(and the other pending claims) recites abstract ideas, these abstract ideas are
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not integrated into a practical application, nor do they include an inventive
concept. In view of the 2019 Revised Guidance, we clarify and expand the
Examiner’s reasoning as follows.
We begin our analysis by broadly but reasonably construing
Appellant’s claim 1 (see Appeal Br. 24–25 (Claims App.)). Claim 1 recites
“[a] system for managing an exchange of digital content between inmates in
a correctional facility and non-inmates” including “at least one computer
server having a processor and connected to software stored on non-transitory
media” and an “inmate device having a processor, a digital display, and
controls, the inmate device including software stored on non-transitory
media” where the server software and inmate device software are
“configured to” perform particular functions. In other words, claim 1 recites
a system including a server (further including a processor) and an inmate
device (further including a processor) executing software to manage
distribution of digital content (data). See Spec. 1:11–13; 2:6–4:24. This is
consistent with Applicant’s description of the system:
[A] system for managing an exchange of digital content between
inmates in a correctional facility and non-inmates . . .
configure[d] to obtain digital content from inmates or non-
inmates, store the digital content until a staffperson of the
correctional facility approves distribution of the digital content
to an intended recipient, and distribute the digital content to the
intended recipient if approved.
Spec. 2:6–12.
The system recited in claim 1 includes non-abstract elements
(physical structure), including one or more computer servers, the server(s)
further includes a processor, and the server is connected to (impliedly
executes) software—the server software of the digital content management
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system—we hereinafter refer to this limitation as “Limitation A.” The
server software is configured to (i.e., the digital content management process
includes a (step, sub-process, or) function to) “receive digital content” where
the content is characterized as being “for distribution to an intended inmate
of the correctional facility.” Hereinafter we refer to this limitation as
“Limitation A1.”
Claim 1 also recites the server software configured to perform a
digital content management process function to “authenticate a requesting
inmate . . . wherein the requesting inmate is authenticated as the intended
inmate,” and that the authentication occurs when an inmate requests
“distribution of the digital content to an inmate device associated with a
unique identifier.” In other words, validating or verifying an inmate’s
identity as the intended recipient of the digital content by an unclaimed and
undisclosed process. See Spec. 26:31–32; 34:20–25; 42:15–33. Hereinafter
we refer to this feature as “Limitation A2.”
Claim 1 further recites the server software configured to perform a
digital content management process function to “determine whether the
inmate device” (see Limitation A2) “is registered to the authenticated
requesting inmate” (see Limitation A1) “based on the unique identifier of the
inmate device.” That is, determining that the (inmate) device is registered to
(matches registration information for) the inmate (who was previously
authenticated) based on the unique identifier of the device by an unclaimed
and undisclosed process. See Spec. 23:16–20; 24:7–12; 30:21–25; 31:12–
13, 15–17; 42:15–33. Hereinafter we refer to this feature as “Limitation
A3.”
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Claim 1 additionally recites that the system includes additional non-
abstract elements (physical structure), including the inmate device, which
also includes a processor, a digital display, controls, and software (the
inmate device software of the digital content management system), where
the processor impliedly executes the software (the software is configured to
perform functions). We hereinafter refer to this limitation as “Limitation B.”
The inmate device software is configured to perform a digital content
management process function to “connect to the at least one computer server
and provide information used to authenticate the requesting inmate and
further provide the unique identifier.” In other words, connecting (via an
unclaimed and undisclosed network) to the server (see Limitation A) in
order to exchange (provide) data including information used to authenticate
the requesting inmate (see Limitation A2) as well as the inmate device
unique identifier (see Limitation A3). Hereinafter we refer to this step as
“Step B1.”
Claim 1 also recites that the inmate device software is configured to
perform a digital content management process function to “receive the
digital content distributed by the at least one server . . . wherein the digital
content includes the license information authorizing use of the content by the
requesting inmate on the inmate device.” That is, receiving data (digital
content) from the server (to an inmate device), where the data includes the
license information (which allows viewing or use of the content by the
inmate on the inmate device). See Spec. 18:18–22, 30–34. Hereinafter we
refer to this feature as “Limitation B2.”

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Claim 1 continues, reciting the inmate device software being
configured to perform a digital content management process function to
“store the license information in a secure key locker located on the inmate
device, wherein the license information is bound to the requesting inmate
device based on the unique identifier associated with the inmate device.” In
other words, storing the license information in a secure key locker (a secure
memory location) located on the inmate device, such that the license
information is confined or restricted (bound) to the inmate device. Claim 1
also characterizes the storing process as being based on the inmate device
unique identifier. See Spec. 18:30–34; 20:15–20; 20:27–21:5. Hereinafter
we refer to this feature as “Limitation B3.”
In summary, claim 1 recites a system including a server and an inmate
device (both including processors) executing software to perform a process
for managing an exchange of data and digital content by receiving digital
content (data) to be distributed to an inmate, authenticating an inmate (user),
determining if an inmate device is registered to the authenticated inmate
based on a unique identifier of the inmate device, receiving the digital
content and license information associated with the content at the inmate
device, and storing the license information in a secure memory location of
the inmate device. Hereinafter, we refer to this process as the “digital
content management process.” This is consistent with how Appellant
describes the claimed invention:
Claim 1 recites two interoperating devices that are configured to
authenticate the inmate, confirm the resident device is registered
to the inmate, and, once the device is confirmed as registered to
the authenticated inmate, the content and license are distributed
to the resident device where the license is bound to the resident’s
device using the unique identifier.
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Reply Br. 5; see also Abstract; Spec. 1:11–13; 2:6–20.
Appellant’s contentions (supra) focus on the Examiner’s purported
improper interpretation of the claims (in particular claim 1) (see Appeal Br.
8–12; Reply Br. 2–6). Here, in rejecting the claims (in particular claim 1)
under 35 U.S.C. § 101, the Examiner analyzed the claims using the
Mayo/Alice two-step framework, consistent with the guidance set forth in the
USPTO’s “2014 Interim Guidance on Patent Subject Matter Eligibility,” 79
Fed. Reg. 74618 (Dec. 16, 2014), in effect at the time the rejection was made
on June 23, 2017. The Examiner notified Appellant of the reasons for the
rejection “together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of . . . [the]
application.” 35 U.S.C. § 132. See Final Act. 5–25. In doing so, the
Examiner set forth a prima facie case of unpatentability such that the burden
of production shifted to Appellant to demonstrate that the claims are patent
eligible.
Appellant also contends (supra) the at-issue claims are not abstract
and that the claims (in particular claim 1) are “directed to an improvement to
the relevant technology” (Appeal Br. 12). See Appeal Br. 12–16; Reply Br.
7–8. Claim 1, however, recites no substantive limitations on how the digital
content management process receives data or digital content to be distributed
to an inmate, authenticates the inmate, determines if the inmate device is
registered to the inmate, or stores received data (the license information) (in
a secure memory location of the inmate device). The limitations are entirely
functional in nature, or characterize various data (digital content or licensing
information) utilized in Limitations A1–A3 and B1–B3. Limitations A and
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B (reciting the system devices) are additional elements that are not part of
the abstract idea analysis.
Although Appellant contends the claims describe purported
technological improvements or advances provided by the recited digital
content management process, claim 1 (and the other pending claims) does
not explicitly recite any specific improvements to technology, i.e., the
system software performing any improved processing or analysis. Claim 1,
instead, simply recites receiving and storing data as well as authenticating a
user and verifying registration of a device based on a device identifier. In
each instance, the particular means of accomplishing the functionality is not
recited in the claim.
A person can practically perform the function of Limitations A1–A3
and B1–B3 (delineated above) mentally, or by using pen and paper.
Nowhere does Appellant point to specific claim limitations that distinguish
over a human process. Further, the revised guidance explains that “mental
processes” include acts that people can perform in their minds or using pen
and paper, even if the claim recites that a generic computer component
performs the acts. See 2019 Revised 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.”) Because each of the limitations discussed above
encompasses an act that people can perform in their minds or using pen and
paper, claim 1 recites mental processes. Appellant’s arguments have not
persuaded us otherwise.
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To the extent Appellant argues utilizing devices (the server and
inmate device) to perform the recited functionality is not abstract, Appellant
misconstrues the inquiry. As we explain supra, the devices are additional
elements that are not part of this part of the abstract idea analysis. The
relevant inquiry is whether the processes (functionality) recited in the claims
(in particular claim 1) are abstract.
We construe claim 1 (supra) as reciting receiving and storing data,
authenticating a user, and verifying registration of a device based on a
device identifier. Claims that recite performing information analysis (e.g.,
user authentication and device identification or registration), and the
collection and exchange of information related to such analysis, have been
determined by our reviewing court to be an abstract concept that is not
patent eligible. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1165,
1167–68 (Fed. Cir. 2018) (Claims reciting “[a] method for providing
statistical analysis” (id. at 1165), were determined to be “directed to an
abstract idea” (id. at 1168). “As many cases make clear, even if a process of
collecting and analyzing information is limited to particular content or a
particular source, that limitation does not make the collection and analysis
other than abstract” (id. at 1168 (citation and quotation marks omitted)). See
also Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1340 (Fed. Cir. 2017) (identifying the abstract idea of collecting, displaying,
and manipulating data); Elec. Power Grp., 830 F.3d at 1354 (characterizing
collecting information, analyzing information by steps people go through in
their minds, or by mathematical algorithms, and presenting the results of
collecting and analyzing information, without more, as matters within the
realm of abstract ideas); Content Extraction & Transmission LLC v. Wells
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Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1345, 1347 (Fed. Cir. 2014)
(finding the “claims generally recite . . . extracting data . . . [and]
recognizing specific information from the extracted data” and that the
“claims are drawn to the basic concept of data recognition”); Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 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.”). Indeed, even if the
analysis requires one to access and gather data from a database or memory,
or utilize a pen and paper in the analysis, such analysis may still be an
abstract mental process. See CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372 (Fed. Cir. 2011) (“[E]ven if some physical steps are
required to obtain information from the database . . . such data-gathering
steps cannot alone confer patentability.” A claim focused on verifying credit
card transaction information is directed to “unpatentable mental processes”
because the claim’s steps “can be performed in the human mind, or by a
human using a pen and paper.”).
Further, the exchange of licensing information, and the control of
information exchange, which is the focus of Appellant’s claims—the claims
are “directed at a system . . . . [that] addresses particular security challenges
posed by distributing digital content to personal devices assigned to inmates
of a controlled-environment facility” (Reply Br. 2)—may be categorized as
certain methods of organizing human activity; specifically, the fundamental
economic practice of exchanging licensing information and managing
interactions (information exchange) between people. Claims focusing on
similar processes and functionality have been determined by our reviewing
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court to be abstract concepts that are not patent eligible. See Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1372 (Fed. Cir.
2017) (verifying (authenticating) payment information, as well as “financial
transactions . . . and data collection related to such transactions”); Smartflash
LLC v. Apple LLC, 680 F. App’x 977, 982–83 (Fed. Cir. 2017) (controlling
access based on verification); OIP Technologies, Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (offer-based price optimization);
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353–55 (Fed. Cir. 2014)
(transaction guaranty as well as sending and receiving communications over
a computer network to facilitate online commercial transactions “constitute[]
‘a fundamental economic practice long prevalent in our system of
commerce’”). The Supreme Court additionally guides that contractual
relations, like licenses and licensing, constitute “a fundamental economic
practice long prevalent in our system of commerce.” Bilski v. Kappos, 561
U.S. 593, 611 (2010); see also Alice, 573 U.S. 221–22, as cited in buySAFE,
765 F.3d at 1354. Thus, claim 1 is directed to a combination of abstract
ideas, including methods of organizing human activity and mental processes.
In summary, we conclude Appellant’s claim 1 recites a judicial
exception (USPTO’s Step 2A, Prong 1; see 2019 Revised Guidance).
Specifically, claim 1 recites a process for managing the distribution of
digital content to inmates in a correctional facility—the digital content
management process—by receiving and storing data, authenticating a user,
and verifying registration of a device based on a device identifier as
discussed supra. The digital content management process consists of
methods of organizing human activity and mental processes that can be
practically performed in the human mind (or utilizing pen and paper)
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including observation, evaluation, or judgment. See 2019 Revised
Guidance, 84 Fed. Reg. at 52, 53 (listing “[m]ental processes—concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion)” as one of the “enumerated groupings of abstract ideas”
(footnote omitted)).
Practical Application
We next consider whether claim 1 integrates the abstract idea into a
practical application (USPTO’s Step 2A, Prong 2). See Revised Guidance,
84 Fed. Reg. at 51. In doing so, we consider whether there are any
additional elements beyond the abstract idea that, individually or in
combination, “integrate the [abstract idea] into a practical application, using
one or more of the considerations laid out by the Supreme Court and the
Federal Circuit.” Revised Guidance, 84 Fed. Reg. at 54–55.
Claim 1 recites additional elements beyond the abstract digital content
management process (the judicial exception) (supra). The additional
elements in claim 1 include the recited “at least one computer server having
a processor and connected to software stored on non-transitory media” (the
server) (see Limitation A, supra) and “the inmate device having a processor,
a digital display, and controls, [and] including software stored on non-
transitory media” (the inmate device) (see Limitation B, supra) that together
execute software “configured to” perform the digital content management
process. Appeal Br. 24–25 (Claims App).
Appellant summarizes these additional elements as “a server and a
device registered to an inmate” as described in Figure 3 “depicting a ‘digital
content store 14’ corresponding to the recited server and ‘client machine 16’
corresponding to the recited device registered to an inmate.” See Appeal Br.
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3–4 (citing Spec. 18:9–11; Fig. 3). Appellant’s written description indicates
that each of these elements encompass commonplace generic components.
For example, Appellant’s Specification explains that “[t]he present
disclosure may be implemented in one or more servers, one or more client
devices, including computer terminals or portable client devices, or a
combination thereof” (Spec. 7:30–31), and further describes the system and
its components and software:
The disclosure is operational with numerous other
computing system environments or configurations. Examples
of well known computing systems, environments, and/or
configurations that may be suitable for use with the disclosure
include, but are not limited to, personal computers, server
computers, hand-held or laptop devices, smartphones,
multiprocessor systems, microprocessor-based systems, set top
boxes, programmable consumer electronics, network PCs,
minicomputers, mainframe computers, distributed computing
environments that include any of the above systems or devices,
and the like.
The disclosure may be described in the general context of
computer-executable instructions, such as program modules,
being executed by one or more computing devices. Generally,
program modules include routines, programs, objects,
components, data structures, etc., that perform particular tasks
or implement particular abstract data types. The disclosure may
also be practiced in distributed computing environments where
tasks are performed by remote processing devices that are
linked through a communications network. In a distributed
computing environment, program modules may be located in
both local and remote computer storage media including
memory storage devices.
Spec. 8:11–25.
In summary, Appellant’s written description does not portray the
server or inmate device (or their respective processors) as anything but
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standard computer components. Nor does Appellant’s written description
portray these components as operating in a new way. Instead the written
description depicts these components as generic components operating in
their accustomed manner.
Appellant’s written description does not describe these additional
elements as performing in any way other than their accustomed functions
utilizing standard techniques. Accordingly, Appellant’s written description
shows that additional elements are generic. See Hybritech Inc. v.
Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (“[A]
patent need not teach, and preferably omits, what is well known in the art.”);
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331 (Fed.
Cir. 2017) (“The claimed mobile interface is so lacking in implementation
details that it amounts to merely a generic component (software, hardware,
or firmware) that permits the performance of the abstract idea, i.e., to
retrieve the user-specific resources.”).
Appellant contends claim 1 (and the other pending claims) provides
“an improvement to the relevant technology” in that the recited system of
claim 1 “addresses a specific technological problem” of “preventing illicit
sharing or other unauthorized use of digital content that is distributed to
personal devices used by residents of controlled-environment facilities”
(Appeal Br. 12), similar to the claims in DDR Holdings. See Appeal Br. 12–
16; Reply Br. 7–8. Appellant further contends the additional elements (the
server and the inmate device) are not generic—“[c]laim 1 cannot be
accomplished using generic computer devices” (Appeal Br. 11). See Appeal
Br. 11–17; Reply Br. 5–10. In other words, Appellant contends the claims
recite a technological improvement that amounts to more than simply
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utilizing a computer as a tool to accomplish the digital content management
process.
Appellant’s contentions correspond to the reasoning in MPEP
§§ 2106.05(a)–(c), where additional elements integrate the judicial exception
into a practical application. We, however, disagree with Appellant’s
contentions. Appellant’s additional elements do not apply or use the digital
content management process (the judicial exception) in a manner that
imposes a meaningful limit on the judicial exception, such that it is more
than a drafting effort designed to monopolize the exception. See Alice, 573
U.S. at 221–24 (citing Mayo, 566 U.S. at 78–85). Rather, Appellant’s claim
recites generic computer elements (the server and the inmate device) that are
utilized as tools to carry out the receiving and storing data, authenticating a
user, and verifying registration of a device based on a device identifier as
discussed supra. Utilizing computers as tools to perform common data
information analysis and data exchange functions that can be mental
processes (an abstract idea) does not impose a meaningful limit on the
abstract idea. See MPEP § 2106.05(f); see also Alice, 573 U.S. at 223
(finding “if [the] recitation of a computer amounts to a mere instruction to
implement an abstract idea on a computer that addition cannot impart patent
eligibility” (quotations and internal citations omitted)).
Appellant’s claim 1 (and the other pending claims) can be
distinguished from patent eligible claims such as those in McRO, Enfish,
BASCOM, and DDR Holdings that are directed to “a specific means or
method that improves the relevant technology” (McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016)), or “a
specific improvement to the way computers operate” (Enfish, LLC v.
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Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)), solving a
technology-based problem (BASCOM Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016)), or a method
“rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer [technology]” (DDR Holdings, 773 F.3d at
1257). Contrary to Appellant’s arguments, claim 1 is not a technological
improvement or an improvement in a technology. Appellant’s claim 1 does
not “improve the functioning of the computer itself” or “any other
technology or technical field.” Alice, 573 U.S. at 225. Nor does it provide a
technological solution to a technological problem. See DDR Holdings, 773
F.3d at 1257; MPEP § 2106.05(a). Appellant fails to explain sufficiently
and persuasively how the instant claim(s) are directed to an improvement in
the way computers operate, nor has Appellant identified any technical
advance or improvement or specialized computer components. See Appeal
Br. 11–17; Reply Br. 5–10.
As discussed supra, nothing in claim 1 precludes a human from
performing the digital content management process. Performing such
information processing functionality is the reason computers exist. The
mere automation of a process that can be performed by a human is not
sufficient to show an improvement in computer functionality, and the fact
that a computer may increase efficiency—be more efficient and accurate by
reducing the difficulty of distributing content (see Appeal Br. 11–17; Reply
Br. 5–10; Spec. 1:16–2:3 (“receiving and distributing inmates’ paper mail is
a significant challenge” (Spec. 1:16–17)))—does not change the abstract-
idea analysis. See Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1370 (Fed. Cir. 2015) (holding that “merely adding computer
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functionality to increase the speed or efficiency of the process does not
confer patent eligibility on an otherwise abstract idea”); OIP Techs., 788
F.3d at 1363 (“[R]elying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible”);
see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed.
Cir. 2016).
In summary, “the focus of the claims is not on such an improvement
in computers as tools, but on certain independently abstract ideas that use
computers as tools.” Elec. Power Grp., 830 F.3d at 1354; see also MPEP
§ 2106.05(f) (emphasis omitted) (instructing Examiners to consider
“[w]hether the claim invokes computers or other machinery merely as a tool
to perform an existing process” in determining whether the claim recites
mere instructions to apply the exception), cited in 2019 Revised Guidance,
84 Fed. Reg. at 55, n.30. Thus, we conclude the claims are directed to an
abstract idea that is not integrated into a practical application.
Inventive Concept
Having concluded Appellant’s claims are directed to an abstract idea
under the 2019 Revised Guidance (Step 2A analysis), we consider whether
claim 1 has an inventive concept, that is, whether the claim has additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). As
discussed above, this requires us to evaluate whether the additional claim
elements add “a specific limitation or combination of limitations that are not
well-understood, routine, conventional activity in the field” or “simply
append[] well-understood, routine, conventional activities previously known
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to the industry, specified at a high level of generality.” Revised Guidance,
84 Fed. Reg. at 56.
The Examiner determined that Appellant’s claim 1 (and the other
pending claims) “do not offer ‘significantly more’ than the abstract idea
itself because the claims do not recite an improvement to another technology
or technical field, an improvement to the functioning of the computer itself,
or provide meaningful limitations beyond generally linking an abstract idea
to a particular technological environment.” Final Act. 7. The Examiner
provides a detailed explanation as to why Appellant’s claims to do not
provide an inventive concept under the second step of the Alice analysis.
See Final Act. 7–25; Ans. 4–5.
Appellant, on the other hand, does not even address the second step of
the Alice analysis. Appellant instead contends claim 1 is similar to the
claims in DDR Holdings (supra). See Appeal Br. 11–17; Reply Br. 5–10.
Appellant fails to persuade us of error in the Examiner’s rejection with
respect to the second Alice step (USPTO’s Step 2B). We agree with the
Examiner that Appellant’s claim 1 (and the other pending claims) does not
evince an “inventive concept” that is significantly more than the abstract
idea itself. In particular, Appellant fails to explain how the additional
elements (above) add specific limitations beyond the judicial exception that
are not well-understood, routine, and conventional in the field.
As previously discussed, claim 1 (and the other pending claims)
merely recites additional non-abstract elements (above) that perform the
digital content management process. We conclude that these additional
elements, individually and as an ordered combination, are generic computer
components that carry out common information exchange and analysis
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functions recited in the digital content management process (the abstract
idea). See, e.g., Spec. 8:11–25. Such conventional computer processes
operating on conventional computer hardware “do not alone transform an
otherwise abstract idea into patent-eligible subject matter.” FairWarning,
839 F.3d at 1096 (citing DDR Holdings, 773 F.3d at 1256).
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the
Examiner’s rejection under § 101 of independent claim 1, independent
claims 12 and 20, and dependent claims 2, 3, 7–9, 13–15, 17–19, and 21–26,
which depend from claims 1 and 12, respectively, and which were not
separately argued with specificity.
Obviousness Rejections of Claims 1–3, 7–9, 12, 17–20, 24, and 25
Appellant argues independent claim 1, independent claims 12 and 20,
and dependent claims 2, 3, 7–9, 17–19, 24, and 25, together as a group with
respect to the 35 U.S.C. § 103 rejection. See Appeal Br. 17–22. We select
independent claim 1 as representative of Appellant’s arguments with respect
to claims 1–3, 7–9, 12, 17–20, 24, and 25. 37 C.F.R. § 41.37(c)(1)(iv).
Appellant contends “Zhang does not teach or suggest license
information that is bound to the requesting inmate device based on the
unique identifier associated with the inmate device” (Appeal Br. 17–18),
“thus restricting the inmate’s ability to transfer the digital content to another
inmate” (Appeal Br. 18). See Appeal Br. 17–20; Reply Br. 11–14.
The Examiner rejects claims 1–3, 7–9, 12, 17–20, 24, and 25 over
Mow, Rae, and Zhang. See Final Act. 25–67. Specifically, with respect to
claim 1 (see Final Act. 25–38), the Examiner explains that Rae teaches
providing an inmate with a communication device, using a unique identifier
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to register and monitor the communication device, and verifying “that a
device is correctly registered for use for a specific inmate” (Final Act. 32) to
control the content or features provided to the device. See Final Act. 31–33,
35–38; Ans. 8–11 (citing Rae ¶¶ 25–27, 55–60, 83). The Examiner further
explains Zhang teaches storing license information on a client device in a
secure memory location. See Final Act. 34–38; Ans. 8–11 (citing Zhang
¶¶ 19, 20, 25, 26, 31–33).
We agree with the Examiner that the Examiner that the combination
of Mow, Rae, and Zhang (and, in particular, Rae and Zhang) would have
taught or at least suggested the disputed limitation of “stor[ing] the license
information in a secure key locker” (a secure memory location) “on the
inmate device” such that “the license information is bound” (i.e., restricted)
to the device “based on the unique identifier.” Appeal Br. 25 (Claims App.);
see claim construction, “Limitation B3,” (supra).
Appellant does not provide an explicit definition for the term
“bound,” nor does Appellant explain with any specificity how the license
information is bound to the particular inmate device. Appellant’s
Specification provides a cursory description of the bound information,
explaining that an asset key (license information) may be “bound” to a client
machine (inmate device) “in conjunction with machine identification.”
Spec. 18:32–34. Accordingly, we find the broadest reasonable interpretation
of this disputed limitation means storing the license information in a secure
memory location of the inmate device where the license information is
provided to the device in conjunction with a machine identification process
using the device’s unique identifier, such that the license information is
restricted to the particular device.
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Zhang’s describes storing license information in a secure storage area
of a client device. See Zhang ¶ 19. Rae describes registering a wireless
communication device (provided to a resident of a controlled environment
facility)—i.e., an inmate device—with an information processing system, as
well as controlling access or communications to the device using a device
identifier (such as an “electronic serial number (ESN)” or “mobile
identification number (MIN)” (Rae ¶ 25)) and a validation process. See Rae
¶¶ 25–27, 55–60, 83. Therefore, we conclude the combination of Rae and
Zhang would have at least suggested to one having ordinary skill in the art
storing license information in a secure memory location of an inmate device
in conjunction with a machine identification process using the device’s
unique identifier. Here, Appellant argues the references individually and
does not address the specific arguments set out by the Examiner. The
references cited by the Examiner must be read, not in isolation, but for what
each fairly teaches in combination with the prior art as a whole. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (one cannot show non-
obviousness by attacking references individually where the rejections are
based on combinations of references).
Accordingly, Appellant’s contentions do not persuade us of error in
the Examiner’s obviousness rejection of representative independent claim 1.
Therefore, we affirm the Examiner’s rejection of representative claim 1,
independent claims 12 and 20, and dependent claims 2, 3, 7–9, 17–19, 24,
and 25, not separately argued with particularity (supra).
Obviousness Rejection of Claims 13–15, 21–23, and 26
The Examiner rejects claims 13–15 and 21–23 over Mow, Rae,
Zhang, and Sidler. See Final Act. 68–76. The Examiner rejects claim 26
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over Mow, Rae, Zhang, and Ringewald. See Final Act. 77–79. Appellant
does not provide substantive specific arguments with respect to these claims
or the additional references (Sidler and Ringewald). See Appeal Br. 22.
For the same reasons as claim 1 (supra), we agree with the Examiner
that Appellant does not persuade us of error in the Examiner’s obviousness
rejection of claims 13–15 and 21–23 over Mow, Rae, Zhang, and Sidler and
the Examiner’s obviousness rejection of claim 26 over Mow, Rae, Zhang,
and Ringewald. See Final Act. 68–79. Therefore, we affirm the Examiner’s
obviousness rejections of claims 13–15, 21–23, and 26.
CONCLUSION
For the reasons discussed above, we determine that claims 1–3, 7–9,
12–15, and 17–26 are directed to an abstract idea and do not demonstrate an
inventive concept. We also determine that claims 1–3, 7–9, 12–15, and 17–
26 are obvious in view of the cited prior art.
Appellant has not shown that the Examiner erred in rejecting claims
1–3, 7–9, 12–15, and 17–26 under 35 U.S.C. § 101. Appellant has also not
shown that the Examiner erred in rejecting claims 11–3, 7–9, 12–15, and 17–
26 under 35 U.S.C. § 103(a). We therefore sustain the Examiner’s rejection
of claims 1–3, 7–9, 12–15, and 17–26.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis 
Affirmed Reversed
1–3, 7–9, 12–
15, 17–26
101 Patent Eligible
Subject Matter
1–3, 7–9, 12–
15, 17–26

1–3, 7–9, 12,
17–20, 24, 25
103(a) Mow, Rae, Zhang 1–3, 7–9, 12,
17–20, 24, 25

13–15, 21–23 103(a) Mow, Rae, Zhang,
Sidler
13–15, 21–23
26 103(a) Mow, Rae, Zhang,
Ringewald
26
Overall
Outcome

1–3, 7–9, 12–
15, 17–26

TIME PERIOD FOR RESPONSE
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