Ryan, Thomas A. et al.

Patent Trials and Appeals Board

Jul 2, 2020

11693554 - (D) (P.T.A.B. Jul. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/693,554 03/29/2007 Thomas A. Ryan AM2-0054US 9479
136607 7590 07/02/2020
Lee & Hayes P.C.
601 West Riverside Avenue
Suite 1400
Spokane, WA 99201
EXAMINER
OBEID, MAMON A
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
07/02/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
lhpto@leehayes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THOMAS A. RYAN and GREGG E. ZEHR
____________________

Appeal 2019-002251
Application 11/693,554
Technology Center 3600
____________________

Before JUSTIN BUSCH, JOYCE CRAIG, and MICHAEL T. CYGAN,
Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1–3, 5, 6, 27, 30, 33, 34, 38–41, 43, and 44. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We affirm.
CLAIMED SUBJECT MATTER
Appellant’s disclosure generally relates to methods for identifying and
transferring content to an electronic book (“eBook”) reader. Spec. ¶¶ 1–5,
16, Abstract. More specifically, the claimed subject matter authenticates the

1 We use the term Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Amazon Technologies, Inc. as the real party in
interest. Appeal Br. 3.
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user based on the reader device’s unique identifier, authorizes access to
content available for purchase, and, in response to a user selecting content,
(1) determines that the content is not available for no cost as part of the
user’s subscriptions and (2) based on that determining (i) charges the user
account; (ii) retrieves the content; and (iii) sends the content to the device.
Spec. ¶ 16, Abstract. Claims 1, 27, and 38 are independent claims, and
claim 1 is reproduced below:
1. A method for transferring electronic content from a server
to an electronic device, the method comprising, at the server:
establishing a wireless connection with the electronic
device;
receiving input data from the electronic device and via the
wireless connection, the input data comprising identification
information that uniquely identifies the electronic device;
identifying a user account associated with the electronic
device based at least in part on the identification information;
retrieving user account information associated with the
user account from one or more databases of the server using the
identification information;
determining that the user account information is valid;
sending to the electronic device, via the wireless
connection, a list of electronic content available from the server
for purchase, wherein the list is sent based at least partly on the
user account information being valid, and the list comprises at
least one symbol representing an item of the electronic content;
receiving additional input data from the electronic device
and via the wireless connection, the additional input data
comprising the identification information and an indication of a
selecting of particular electronic content from the list, wherein
the selecting is from the electronic device using the at least one
symbol;
determining that the particular electronic content is not
included in one or more subscriptions associated with the user
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account, wherein a subscription allows retrieval of electronic
content included in the subscription for no cost; and
based at least in part on determining that the particular
electronic content is not included in the one or more
subscriptions associated with the user account:
debiting the user account for a cost of the particular
electronic content;
retrieving the particular electronic content from the
one or more databases of the server; and
sending the particular electronic content to the
electronic device via the wireless connection, wherein the
particular electronic content is unique relative to items
already stored in a memory of the electronic device when
sending the particular electronic content.
REJECTIONS
Claims 1–3, 5, 6, 27, 30, 33, 34, 38–41, 43, and 44 stand rejected
under 35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement. Non-Final Act. 7–8; Ans. 9–10.
Claims 1–3, 5, 6, 27, 30, 33, 34, 38–41, 43, and 44 stand rejected
under 35 U.S.C. § 112, second paragraph, as indefinite. Non-Final Act. 8–9.
Claims 1–3, 5, 6, 27, 30, 33, 34, 38–41, 43, and 44 stand rejected
under 35 U.S.C. § 103 as being obvious in view of Iino (US 2004/0133847
A1; July 8, 2004), Umekawa (US 2002/0049729 A1; Apr. 25, 2002), and
Biddle (US 2002/0107809 A1; Aug. 8, 2002). Non-Final Act. 9–16.2
Claims 1–3, 5, 6, 27, 30, 33, 34, 38–41, 43, and 44 stand rejected
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
Ans. 3–8.3

2 The Examiner omits claims 43 and 44 in the heading of the rejection but
substantively addresses these claims as obvious in view of Iino, Umekawa,
and Biddle in the body of the rejection. Non-Final Act. 9, 15.
3 The Examiner entered a new ground of rejection in the Answer. Ans. 3.
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ANALYSIS
Appellant argues the claims as a group. See, e.g., Appeal Br. 31
(“Furthermore, for at least similar reasons as those set forth above with
respect to claim 1, Appellant submits that independent claims 27 and 38 as
well as all of the pending dependent claims, also recite statutory subject
matter”), 37 (“claims 2-3, 5, 6, 30, 43, and 44 are also allowable over the
cited documents of record for at least their dependency from” claim 1), 38
(asserting independent claim 27 is patentable over the asserted prior art for
the reasons presented regarding claim 1), 38–39 (“claims 33 and 34 are also
allowable over the cited documents of record for at least their dependency
from” claim 27), 40 (asserting independent claim 38 is patentable over the
asserted prior art for the reasons presented regarding claim 1 and that
“claims 39-41 are also allowable over the cited documents of record for at
least their dependency from” claim 38). Therefore, we select independent
claim 1 as representative of all pending claims on appeal. See 37 C.F.R.
§ 41.37(c)(1)(iv).
REJECTIONS UNDER 35 U.S.C. § 112, FIRST PARAGRAPH
The Examiner rejects claims 1–3, 5, 6, 27, 30, 33, 34, 38–41, 43, and
44 under 35 U.S.C. § 112, first paragraph, for failing to comply with the
written description requirement. Non-Final Act. 7–8. Specifically, the
Examiner finds the Specification does not provide written description
support for two clauses recited in representative claim 1 and
commensurately recited in independent claims 27 and 38: (1) “determining
that the particular electronic content is not included in one or more
subscriptions associated with the user account” (hereinafter the “determining
step”), Appeal Br. 43 (claim 1, emphasis added) and (2) “sending the
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particular electronic content to the electronic device via the wireless
connection, wherein the particular electronic content is unique relative to
items already stored in a memory of the electronic device when sending the
particular electronic content” (hereinafter the “unique content” limitation),
Appeal Br. (claim 1, emphasis added). Non-Final Act. 7–8; Ans. 9–10.
The Determining Step
The Examiner finds that determining that the user is a subscriber is
different than “determining that the particular electronic content is not
included in one or more subscriptions associated with the user account, as
recited in the determining step. Ans. 9. The Examiner finds the
Specification supports only determining whether a user is a subscriber, not
the recited determining step. Ans. 9 (citing Spec., Fig. 7 (item 732).
Appellant argues the Specification discloses that the system
determines whether particular electronic content the user selected is either
(1) part of a subscription or (2) not part of a subscription. Appeal Br. 15
(citing Spec. ¶¶ 64, 65, Figs. 2, 7a (decision block 732 (“Subscriber?”)).
Appellant asserts the Examiner’s characterization of the Specification
supporting “determining whether a user is a subscriber” but not supporting
the determining step is a distinction without a difference. Reply Br. 5.
Appellant agrees with the Examiner that Figure 7a and the accompanying
description in paragraphs 64 and 65 depict and describe determining whether
a user is a subscriber, but further notes that the disclosed determination
determines whether the user is a subscriber to content. Reply Br. 5.
As Appellant argues, see Appeal Br. 15 (citing Spec. ¶¶ 64, 65,
Figs. 2, 7a), the Specification describes the determining step. Spec. ¶ 64, 65,
Fig. 7a; see also id. ¶¶ 62 (disclosing receiving a user-selected content at a
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reader device and sending the selected content and device ID to the server),
63 (disclosing the server determining user account information correlated to
the device ID). More particularly, the Specification discloses “determin[ing]
whether the account information indicates that the user is a subscriber of the
content, wherein a subscriber is entitled to the content at no cost or other
determined cost” and, if the server “determines that the user is a subscriber
[of the content] (‘yes’ to block 732), the [server] then enables . . . log[ging]
the selection.” Spec. ¶ 64 (emphasis added); see Spec., Fig. 7a. Similarly, if
the server “determines that the user is not a subscriber of the selected content
(‘no’ to block 732), the [server] then supplies the purchase handler module
122 with the user’s account information” and, after the price is debited from
the user’s account, confirms the purchase. Spec. ¶ 65; see Spec., Fig. 7a.
Given these disclosures in the Specification, we agree with Appellant
that the Specification supports the determining step. The Examiner’s finding
that the Specification supports only that a user is a subscriber ignores the
disclosures stating that the system determines whether the user is a
subscriber of the content. Accordingly, we do not sustain the Examiner’s
rejection of claim 1 based on the determining step being unsupported by the
written description.
The Unique Content Limitation
The Examiner, noting that the Examiner reviewed the Specification,
including Appellant’s identified portions, also finds that the unique content
limitation is not supported by the Specification. Non-Final Act. 8; Ans. 10.
Appellant argues the Specification supports the unique content limitation.
Appeal Br. 16 (citing Spec. ¶¶ 29, 48, 50, 51, 66). Appellant also argues the
Examiner has not met “his burden of establishing lack of enablement” for
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the unique content limitation and the Specification’s disclosure of methods
for purchasing new content would have allowed a person of ordinary skill in
the art “to make or use, without undue experimentation,” the disputed unique
content limitation. Reply Br. 4–5 (citing Spec. ¶¶ 16, 19) (emphases added).
To satisfy the written description requirement, the disclosure must
reasonably convey to ordinarily skilled artisans that Appellant possessed the
claimed invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly
& Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Specifically, the test
requires “an objective inquiry into the four corners of the specification from
the perspective of a person of ordinary skill in the art” to determine whether
the specification describes “an invention understandable to that skilled
artisan and show[s] that the inventor actually invented the invention
claimed.” Ariad Pharms., 598 F.3d at 1351 (quotations and citations
omitted). However, it is not enough to satisfy the written description
requirement that the claimed subject matter would have been obvious to a
person of ordinary skill in view of the written description. See Ariad
Pharms., 598 F.3d at 1352 (citing Lockwood v. Am. Airlines, 107 F.3d 1565,
1571–72 (Fed. Cir. 1997)); ICU Med., Inc. v. Alaris Med. Sys., Inc., 558
F.3d 1368, 1377 (Fed. Cir. 2009); see also Regents of the Univ. of Cal. v. Eli
Lilly & Co., 119 F.3d 1559, 1566–67 (Fed. Cir. 1997) (explaining that “an
applicant complies with the written description requirement by describing
the invention, with all its claimed limitations, not [by describing merely] that
which makes it obvious” (quotations omitted)).
With respect to Appellant’s arguments in the Appeal Brief, we agree
with the Examiner that cited Specification paragraphs 29, 48, 65, 66 and
cited Figures 2 and 7a fail to support the unique content limitation. Notably,
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these are the same paragraphs and figures Appellant cites as providing
support for the claims in the Appeal Brief’s summary of claimed subject
matter. Appeal Br. 8, 10–11. To the extent these paragraphs discuss
content, they merely describe that a user may select, be charged for, and
receive content. See Spec. ¶¶ 29 (describing a content selection module that
receives a user’s content selection, retrieves the selected content from a
database, and transmits the content to the reader device), 48 (describing a
purchase module that allows an electronic reader device user to purchase
content stored on a content server), 50 (describing the ability to select and
purchase multiple content items in a single transaction), 51 (alternatively
describing separate, sequential transactions for purchasing multiple content
items), 66 (describing a content selection module that retrieves the selected
content from a database and transfers the content from a server to the reader
device). Nothing in these cited paragraphs demonstrates the inventor was in
possession of representative claim 1’s unique content limitation, which
recites that “the particular electronic content is unique relative to content
already stored in a memory of the electronic device when sending the
particular electronic content.” Appeal Br. 44.
Setting aside the fact that Appellant belatedly pointed to Specification
paragraphs 16 and 19 for the first time in the Reply Brief, these arguments
nevertheless fail to persuade us that the Examiner erred. First, Appellant’s
arguments (i.e., that (1) the Examiner did not meet the initial burden of
demonstrating the unique content limitation is not enabled and (2)
paragraphs 16 and 19 would have enabled a person of ordinary skill in the
art to make or use the disputed limitation without undue experimentation) do
not address the Examiner’s rejection. See Reply Br. 4–5. The Examiner
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rejects the claims as lacking sufficient written description support not for
lack of enablement.
Second, even considering the Specification’s general disclosure that
the described “systems and methods reduce time needed to purchase new
content,” Spec. ¶¶ 16, 19, these disclosures do not demonstrate the inventor
was in possession of the particular details recited in the unique content
limitation. In particular, these general disclosures that the system or method
may reduce how long it takes or how much user-entered information is
needed in order to “purchase new content” fail to demonstrate possession of
the recited limitation that the content is “unique relative to items already
stored in a memory of the electronic device,” as recited in representative
claim 1. Moreover, Appellant has not identified support in the Specification
for the fact that the content is unique “when sending the particular electronic
content.”
On this record, we find the Specification fails to support the unique
content limitation. For the reasons discussed above, we sustain the
Examiner’s rejection of representative claim 1 for failing to provide written
description support for the unique content limitation. For the same reasons,
we sustain the Examiner’s rejection of independent claims 27 and 38, which
recite a commensurate limitation and are not argued separately with
particularity. Because every dependent claim inherits the unique content
limitation recited in the independent claims, we sustain the Examiner’s
rejection of claims 1–3, 5, 6, 27, 30, 33, 34, 38–41, 43, and 44 under
35 U.S.C. § 112, first paragraph.
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REJECTIONS UNDER 35 U.S.C. § 112, SECOND PARAGRAPH
The Examiner rejects claims 1–3, 5, 6, 27, 30, 33, 34, 38–41, 43, and
44 under 35 U.S.C. § 112, second paragraph as indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor regards as the invention. Non-Final Act. 8–9. Specifically, the
Examiner finds representative claim 1’s recited “receiving . . . an indication
of a selecting of particular electronic content from the list” and “determining
that the particular electronic content is not included in one or more
subscriptions associated with the user account” are inconsistent. Non-Final
Act. 9. The Examiner finds the receiving step indicates “the particular
content item has been selected,” but the determining step indicates “that the
particular content item has not been selected.” Non-Final Act. 9; see also
Ans. 11 (finding it is unclear whether “the particular electronic content”
recited in the determining step refers to the content identified as selected in
the receiving step (i.e., the “indication of a selecting of particular electronic
content”).
Appellant argues these two steps are not inconsistent or unclear.
Appeal Br. 17–18. Appellant contests the Examiner’s finding that the
determining step demonstrates that the particular content has not been
selected. Appeal Br. 17. Appellant explains that (1) a reader device
receives a user selection of particular content from a list of content available,
(2) in the receiving step, a server receives an indication from the reader
device of that selection of particular content, and (3) in the determining step,
the server determines whether the particular content that the user selected is
part of a subscription associated with the user account. Appeal Br. 18.
Appellant argues that a user may access content that may not be in a
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subscription and, together, these steps evaluate whether the user needs to pay
for the particular selected content (because it is not part of a user’s
subscription) instead of receiving it at no cost (because it is part of a user’s
subscription). Appeal Br. 18. Appellant also argues that the “particular
electronic content” recited in the determining step has clear antecedent basis
back to the selected “particular electronic content” about which the server
received an indication in the receiving step. Reply Br. 7.
We agree with Appellant. We are unable to discern any ambiguity or
inconsistency in the identified portions of representative claim 1. As
Appellant argues, “the particular electronic content” recited in the
determining step refers back to the “particular electronic content” recited in
the receiving step. It is also clear that the receiving step merely recites that
the server receives an indication that a user selected the particular electronic
content and the determining step merely checks whether that particular
electronic content is not part of a subscription that allows the user to receive
the content for no cost. Accordingly, we reverse the rejection of claims 1–3,
5, 6, 27, 30, 33, 34, 38–41, 43, and 44 under 35 U.S.C. § 112, second
paragraph as indefinite.
REJECTIONS UNDER 35 U.S.C. § 103
The Examiner rejects claims 1–3, 5, 6, 27, 30, 33, 34, 38–41, 43, and
44 as obvious in view of Iino, Umekawa, and Biddle. Non-Final Act. 9–16.
Of particular relevance to this Appeal, the Examiner finds: (1) Iino’s
directory for unpurchased content teaches or suggests determining that
content is not included in a subscription, Non-Final Act. 11 (citing Iino
¶¶ 144, 145, 193, 232, Fig. 17); Ans. 20, 22; (2) Umekawa’s unpurchased
items teach or suggest particular content not being included in a
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subscription, Non-Final Act. 12 (citing Umekawa ¶¶ 28, 30, Figs. 2, 5);
Ans. 20–21, 23 (additionally citing Umekawa, Fig. 8); and (3) Biddle’s
renewal of an expired license subscription teaches or suggests debiting a
user account for the cost of particular content based on determining that the
content is not included in one of the user’s subscriptions, Non-Final Act. 13
(citing Biddle ¶¶ 32, 49, 104); Ans. 21, 23.
Appellant argues Umekawa relates to determining whether a user
already has been charged for selected content and not charging a user if the
user already has purchased that selected content. Appeal Br. 35; Reply
Br. 20–21. Appellant argues Umekawa does not relate to content
subscriptions and, accordingly, fails to teach or suggest determining whether
selected content is part of a subscription associated with the user’s account.
Appeal Br. 36; Reply Br. 21–22. Similarly, Appellant argues Iino relates to
directories that manage purchased and unpurchased (i.e., downloaded, but
encrypted) content on a device, and Appellant asserts “Iino is silent
regarding determining the inclusion of content items within a subscription.”
Reply Br. 22–23. Finally, Appellant contends Biddle relates to a software
licensing model for accessing software applications over a network but
Biddle fails to teach or suggest determining that content is not included in a
subscription. Reply Br. 23. Appellant argues the combination of references
therefore fails to teach the disputed determining step “because none of the
references teaches or suggests a determination that content is outside a
subscription.” Reply Br. 24.
When construing claim terminology during prosecution before the
Office, claims are to be given their broadest reasonable interpretation
consistent with the Specification, reading claim language in light of the
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Specification as it would be interpreted by one of ordinary skill in the art. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We
are mindful that limitations are not to be read into the claims from the
Specification. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Representative claim 1 recites “a subscription allows retrieval of
electronic content included in the subscription for no cost.” Appeal Br. 43.
The Specification states that contents may “be provided under subscription”
and that the system or method may “determine[] whether the account
information indicates that the use is a subscriber of the content, wherein a
subscriber is entitled to the content at no cost or other determined cost.”
Spec. ¶¶ 34, 64 (emphasis added); see Spec. ¶ 65. If the user is a subscriber
of the content, the system logs the selection, retrieves the content, and
transfers the content to the device. Spec. ¶¶ 64, 66. If “the user is not a
subscriber of the selected content,” the system debits the user account for the
content, retrieves the content, and transfers the content to the device. Spec.
¶¶ 65 (emphasis added), 66. These paragraphs are the same paragraphs
Appellant identifies as supporting the relevant limitations. Appeal Br. 8.
The Examiner implicitly construes the determining step as
encompassing Iino’s and Umekawa’s disclosed determinations that a user
was not already charged for the content. See Non-Final Act. 11–12 (citing
portions of Iino and Umekawa disclosing systems and methods that
determine whether to charge a user for content based on whether the user
already purchased (i.e., was charged for) the content); Ans. 20–23. Given
the Specification’s disclosures discussed above, and particularly in light of
the Specification’s description that a user may be a “subscriber of the
content,” Spec. ¶ 64, we agree with the Examiner’s implicit construction.
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More specifically, the broadest reasonable interpretation of
determining whether content is included in a subscription associated with a
user account encompasses determining whether the user already has paid for
the content if the system allows a user to download that content again at no
cost. The claim explicitly recites that “a subscription allows retrieval of
electronic content included in the subscription for no cost.” In other words,
having already purchased the content the user is a subscriber of the content
because the system allows the user to download that content “for no cost.”
As discussed further below, based on this construction, we therefore agree
with the Examiner that the combination of Iino, Umekawa, and Biddle
teaches or suggests the determining step.
Iino relates to devices and systems that manage purchasing and
distributing digital content, such as electronic books (e-books), to devices.
Iino ¶¶ 1–7, 14, 22, 102, 144, 145, Abstract. Iino’s user devices include a
first storage area that stores the device ID and a second storage area that
stores information for managing a catalog of purchased content and a catalog
of unpurchased content. Iino ¶¶ 193, 209, 232, Figs. 17, 18, 21, 26.
Umekawa relates to devices and systems that provide electronic
content to a user and does not repeatedly charge a user for downloading a
particular item that the user already has paid for. Umekawa ¶¶ 2, 6,
Abstract. Umekawa manages a table that stores user identifying information
(e.g., “information [that] identifies the [user’s] mobile phone”) and the
content for which the users already have been charged. Umekawa ¶¶ 7, 28,
30, Figs. 2–8. If the user requests an item for which the user already has
been charged, the user is not charged again and the device downloads the
item. Spec. ¶ 30. On the other hand, if the user requests an item for which
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the user has not been charged yet, the user is charged for the item, the item is
added to the table to associate the user identifying information and the
purchased item, and the device downloads the item. Spec. ¶ 30, Fig. 2.
Biddle relates to managing license data for electronic content
techniques and discloses that licenses may be provided using a
“subscription-based model.” Biddle, ¶¶ 16, 39, 49, Abstract, Fig. 20. A user
may provide user information and receive a license file that allows the user
to access the licensed content “after the appropriate checks have been
performed by the license monitor.” Biddle ¶ 104. If the device identifier on
which the content is being accessed does not match the identifier in the
license file, access to the content is denied. Biddle ¶ 104. If the subscription
has expired, the user may need to renew the subscription in which case the
user is charged again for the content. Biddle ¶ 104.
Therefore, we agree with the Examiner that the proposed combination
teaches or suggests the determining step because the proposed combination
results in a system and method in which a user may download an item of
electronic content and, if the user has already paid for the item, the user may
download the item again at no cost. In particular, Iino, Umekawa, and
Biddle teach or suggest systems and methods that: (1) allow users to
transmit a device identifier along with a request to download a selected
content item, see Iino ¶¶ 14, 22 (“a unit of user information management
which manages user information about the users of the receiving terminals
associated with the equipment identifiers”), 144, 145, Figs. 18, 21, 26;
Umekawa ¶¶ 7, 28, 30, Figs. 2–8; (2) in response to a request to download
content, determine whether the user associated with the user identifying
information (e.g., information identifying a mobile phone) has not paid for
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the selected content item, Iino ¶¶ 22 (“usage history information that the
user has now purchased the at least one content” and “a billing unit which
identifies user information, based on the equipment identifier data received,
and bills the user identified by the thus identified user information,
according to the usage history information.”), 248 (“the billing unit 2307
creates a billing that charges the user for the price of the e-book purchased
by the user”), 232 (“checks to see whether the e-book content selected by the
user exists in the directory 2507 for managing e-books not purchased”);
Umekawa ¶¶ 28, 30, Fig. 2; and (3) charge the user only for content not
already paid for, Iino ¶¶ 22, 248; Umekawa ¶¶ 28, 30; Biddle ¶ 104; and (4)
transfer the content to the user’s device, Iino ¶¶ 145, 193, 209, 232;
Umekawa ¶30.
Appellant’s arguments regarding Iino and Umekawa, Appeal Br. 35–
36; Reply Br. 20–23, fail to persuasively demonstrate error in the
Examiner’s interpretation of a “subscription.” Given this construction and
the systems and methods resulting from the proposed combination discussed
above, Appellant also fails to persuasively demonstrate error in the
Examiner’s finding that the combination of Iino and Umekawa teaches or
suggests this aspect of representative claim 1.
Moreover, as the Examiner noted, the rejection is based on a proposed
combination of Iino, Umekawa, and Biddle. Ans. 22. The Examiner finds
Biddle teaches debiting an account based at least in part on determining that
the content is not included in a subscription because Biddle discloses
charging a user to renew a license based on determining that the user’s
subscription to the content has expired. Non-Final Act. 13 (citing Biddle
¶¶ 32, 49, 104); Ans. 23. Appellant argues Biddle does not teach the
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determining step because Biddle describes using a software application for a
period of time at no fee but fails to determine that the content is not included
in a subscription. Reply Br. 23. These arguments do not explain sufficiently
why Biddle’s explicit disclosure of licensing electronic content on a
subscription basis, see Biddle ¶¶ 16, 49, 104, 107, fails to teach debiting a
user account based on determining whether the content is part of a
subscription.
For these reasons, we agree with the Examiner that the combination of
Iino, Umekawa, and Biddle teaches or suggests the determining step recited
in representative claim 1. Accordingly, we sustain the Examiner’s rejection
of representative claim 1 and claims 3, 5, 6, 27, 30, 33, 34, 38–41, 43, and
44, which Appellant does not argue separately with particularity.
REJECTION UNDER 35 U.S.C. § 101
The Examiner concludes the claims are patent ineligible under
35 U.S.C. § 101. Ans. 3–8. The Examiner has entered a new ground of
rejection under 35 U.S.C. § 101 in the Answer. Ans. 3. Therefore, we
address Appellant’s arguments directed to this new ground of rejection that
Appellant has presented in the Reply Brief.
Appellant disputes the Examiner’s rejection, arguing the claims are
not directed to an abstract idea and the claims recite significantly more than
any alleged abstract idea. Reply Br. 10–19. More specifically, Appellant
argues “the claims do not recite an abstract idea that fits into one of the three
recognized groupings of abstract ideas,” the “claims integrate the alleged
abstract idea into a practical application . . . because they contain elements
that reflect an improvement in the functioning of a computer, or an
improvement to other technology or technical field,” and the Examiner
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failed to consider additional elements beyond the abstract idea that add
significantly more to the abstract idea because the combination of elements
provides an unconventional solution. Reply Br. 10–19.
If a claim falls within one of the statutory categories of patent
eligibility, the Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101—i.e., evaluating whether the claim
is directed to a judicially recognized exception. Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 217 (2014). We also consider the United States Patent
and Trademark Office’s revised guidance for applying the Alice framework
when evaluating subject matter eligibility under 35 U.S.C. § 101. USPTO,
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Guidance”); USPTO, October 2019 Patent Eligibility
Guidance Update (Oct. 18, 2019), https://www.uspto.gov/PatentEligibility
(“Guidance Update”).
As part of our inquiry, we “look at the ‘focus of the claimed advance
over the prior art’ to determine if the claim’s ‘character as a whole’ is
directed to excluded subject matter.” Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016); see Alice, 573 U.S.
at 217 (“First, we determine whether the claims at issue are directed to one
of those patent-ineligible concepts”). The Guidance breaks this “directed to”
inquiry (“Step 2A”) into two prongs of analysis: (i) does the claim recite a
judicial exception (e.g., an abstract idea) (“Prong 1”), and (ii) if so, is the
judicial exception integrated into a practical application (“Prong 2”).
Guidance, 84 Fed. Reg. at 54.
If we determine the claim is directed to an abstract idea, we then
examine “the elements of each claim both individually and ‘as an ordered
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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 Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 78, 79 (2012)). That is, we examine the claims for an “inventive
concept,” “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to 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); see Guidance, 84 Fed.
Reg. at 56 (directing us to consider 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 to the
industry” (“Step 2B”)).
Guidance Step 2A (The Alice “Directed To” Inquiry)
The Examiner characterizes the claims as being “directed to the series
of steps for transferring content from a server to a user device based on
subscription.” Ans. 4. Although the Answer does not explicitly state which
category of abstract idea Appellant’s claims fall under (i.e., whether the
Examiner considers the abstract idea to be a mental process or a certain
method of organizing human activity), see Ans. 4 (characterizing a “series of
steps for transferring content from a server to a user device based on
subscription” as “an idea of itself”), that alone does not render the
Examiner’s rejection improper.
Appellant argues “the claims do not recite an abstract idea that fits
into one of the three recognized groupings of abstract ideas.” Reply Br. 11.
Appellant asserts the Examiner’s characterization as an “idea of itself” is not
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one of the groupings listed and generally refers to mental processes. Reply
Br. 11. Appellant contends the identified abstract idea cannot be a mental
process because the Examiner’s characterization of the abstract idea
“includes two pieces of hardware” and “a human mind cannot transfer
content between devices” or “use a pen and paper to transfer content
between a server and user device.” Reply Br. 11–12.
Although “an idea of itself” generally may be considered a mental
process, the Examiner also cites Federal Circuit cases having claims that fall
within the certain methods of organizing human activity category of abstract
ideas and, more specifically, the commercial interactions subcategory that
includes marketing or sales activities and business relations. See Ans. 6
(citing Affinity Labs of Tex., LLC v. Amazon.com Inc., 838 F.3d 1266 (Fed.
Cir. 2016); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014);
DIRECTV, 838 F.3d 1253; Intellectual Ventures I LLC v. Erie Indemnity
Co., 850 F.3d 1315 (Fed. Cir. 2016)).
In general, we agree with the Examiner that the claims as a whole are
directed to authenticating and authorizing a user to purchase content based
on device identification information, charging the user for content not part of
a subscription, and transferring the purchased content to a device
(hereinafter “authorizing a user to purchase content”). See Affinity Labs, 838
F.3d at 1257. Consistent with our Guidance, we conclude authorizing a user
to purchase content is a certain method of organizing human activity (i.e.,
advertising, marketing, and sales activities) and, alternatively, mental
processes (i.e., a concept performed in the human mind, such as, an
observation, evaluation, judgment, and opinion), which are abstract ideas.
See Guidance, 84 Fed. Reg. at 52.
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This is consistent with how Appellant describes the claimed
embodiments of the invention. See, e.g., Spec. ¶¶ 16 (“This disclosure is
directed to an electronic reader device that includes systems and methods for
obtaining electronic content from a server with a client electronic reader
device” including “automatically providing the server with reader device
identification information when the electronic reader device connects with
the server.”), 19 (“An electronic book (‘eBook’) reader device and a method
for operating an electronic reader device are provided wherein the device
and method include enhanced purchase management features designed to
reduce the time needed to purchase new content, reduce the amount of
information required to purchase new content, and enhance the user’s
purchase experience.”); Title (“Content Purchase and Transfer Management
for Reader Device”); see also Appeal Br. 22–23 (asserting “the claims are
directed to an ordered combination of components comprising at least one
technical solution to at least one technical problem,” namely “the excessive
input data required to be sent from an electronic device to a server to request
and receive electronic content” by “automatically providing the server with
the reader device identification information” and transmitting the device ID
along with the content selection (quoting Spec. ¶¶ 16, 48; citing Spec. ¶¶ 20,
43, 44, 59, 62)).
Although we describe the abstract idea slightly differently than the
Examiner, the Examiner’s characterization of the idea is not erroneous. “An
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). The
level of abstraction an examiner uses to describe an abstract idea need not
“impact the patentability analysis.” Apple, 842 F.3d at 1241. That is true
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here. Regardless of the level of generality used to describe the abstract idea
recited, the claims are directed to an abstract idea. Cf. Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344–45 (Fed.
Cir. 2013) (“Although not as broad as the district court’s abstract idea of
organizing data, it is nonetheless an abstract concept.”).
Consistent with our Guidance and case law, and as explained further
below, we conclude that authorizing a user to purchase content is directed to
an abstract idea because it is a certain method of organizing human activity
(e.g., a commercial interaction, such as a sales activity). See Guidance, 84
Fed. Reg. at 52; see also Ultramercial, 772 F.3d at 714 (concluding the
claims were directed to using advertising as an exchange or currency to
access media content and, therefore, to an abstract idea); Amazon.com, 838
F.3d at 1269 (concluding “the concept of delivering user-selected media
content to portable devices is an abstract idea”); Interval Licensing LLC v.
AOL, Inc., 896 F.3d 1335, 1344–45 (Fed. Cir. 2018) (concluding that
“providing someone an additional set of information without disrupting the
ongoing provision of an initial set of information is an abstract idea”);
Smartflash LLC v. Apple Inc., 680 F. App’x 977, 980–83 (Fed. Cir. 2017)
(concluding claims describing providing multimedia content in response to a
selection of available multimedia content and payment validation for the
content were directed to “conditioning and controlling access to data based
on payment” and fell generally within the certain methods of organizing
human activity category); Prism Techs. LLC v. T-Mobile USA, Inc., 696 F.
App’x 1014, 1017 (Fed. Cir. 2017) (concluding “providing restricted access
to resources” is abstract).
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Alternatively, authorizing a user to purchase content is a mental
process that is applied and performed in a computing environment. See
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)
(concluding that “analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category”); see also Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1372 (Fed.
Cir. 2017) (concluding “the collection, storage, and recognition of data” was
abstract). Appellant’s arguments that the abstract idea includes hardware
and that a human cannot transfer content between the devices is not
persuasive of error.
It is well settled that merely reciting generic computer components
performing steps that could otherwise be performed mentally does not
change their characterization as mental steps. Guidance, 84 Fed. Reg. at 52
n.14. As explained above, the Federal Circuit has determined claims
directed to similar concepts were abstract. See, e.g., Ultramercial, 772 F.3d
at 714; Affinity Labs, 838 F.3d at 1269; Smartflash, 680 F. App’x at 980–83.
The claims in these Federal Circuit cases also included hardware and
involved transferring content between two devices.
Guidance Step 2A, Prong 1 (Recite an Abstract Idea)
Claim 1 is reproduced below and includes the following claim
limitations that recite aspects of the sales activity or mental steps
constituting the abstract idea of authorizing a user to purchase content,
emphasized in italics:
1. A method for transferring electronic content from a server
to an electronic device, the method comprising, at the server:
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establishing a wireless connection with the electronic
device;
receiving input data from the electronic device and via the
wireless connection, the input data comprising identification
information that uniquely identifies the electronic device;
identifying a user account associated with the electronic
device based at least in part on the identification information;
retrieving user account information associated with the
user account from one or more databases of the server using the
identification information;
determining that the user account information is valid;
sending to the electronic device, via the wireless
connection, a list of electronic content available from the server
for purchase, wherein the list is sent based at least partly on the
user account information being valid, and the list comprises at
least one symbol representing an item of the electronic content;
receiving additional input data from the electronic device
and via the wireless connection, the additional input data
comprising the identification information and an indication of a
selecting of particular electronic content from the list, wherein
the selecting is from the electronic device using the at least one
symbol;
determining that the particular electronic content is not
included in one or more subscriptions associated with the user
account, wherein a subscription allows retrieval of electronic
content included in the subscription for no cost; and
based at least in part on determining that the particular
electronic content is not included in the one or more
subscriptions associated with the user account:
debiting the user account for a cost of the particular
electronic content;
retrieving the particular electronic content from the
one or more databases of the server; and
sending the particular electronic content to the
electronic device via the wireless connection, wherein the
particular electronic content is unique relative to items
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already stored in a memory of the electronic device when
sending the particular electronic content.
In other words, the abstract sales activity or mental process of
authorizing a user to purchase content comprises (i) receiving identification
information; (ii) identifying a user account based on the identification
information; (iii) determining that the user account is valid; (iv) providing a
list of content available for purchase; (v) receiving a selection of an item the
user wishes to purchase; (vi) determining the user cannot access the content
at no cost; and (vii) debiting the user account. Guidance, 84 Fed. Reg. at 52
(explaining that certain methods of organizing human activity that constitute
abstract ideas include “commercial or legal interactions (including . . . sales
activities or behaviors . . .)”). These steps merely make up part of the
abstract idea because they all are aspects of allowing a user to purchase
content by identifying the user and the validity of user’s account, presenting
available items, receiving a selection, and charging the user account for the
item. These are basic elements of a transaction to purchase content.
Additionally, these same steps recite mental steps comprising aspects
of the abstract idea of authorizing a user to purchase content. Guidance, 84
Fed. Reg. at 52 (describing the mental process category of abstract ideas as
including concepts performed in the human mind, such as observations,
evaluations, judgments, and opinions). Receiving information (identifying
information and an indication of selected content) are merely observations;
identifying an account affiliated with the identification, determining the
validity of the account, and determining whether the user is allowed to
access the content at no cost are merely evaluations; and debiting an account
encompasses a mental process or a ledger (using pen and paper) for tracking
amounts owed for certain accounts. Regarding Appellant’s assertion that the
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steps could not be performed mentally, Reply Br. 11–12, the steps can be
performed either mentally or with pen and paper. See Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016); accord
Guidance, 84 Fed. Reg. at 52 n.14; Guidance Update 9.
Accordingly, the claims recite abstract ideas—i.e., mental processes
and certain methods of organizing human activity.
Guidance Step 2A, Prong 2 (Integrate Into a Practical Application)
Because claim 1 recites an abstract idea, we next determine whether it
integrates the abstract idea into a practical application. Guidance, 84 Fed.
Reg. at 54. To determine whether the judicial exception is integrated into a
practical application, we identify whether there are “any additional elements
recited in the claim beyond the judicial exception(s)” and evaluate those
elements to determine whether they integrate the judicial exception into a
recognized practical application. Guidance, 84 Fed. Reg. at 54–55
(emphasis added); see also Manual of Patent Examining Procedure
(“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th ed., Rev. 08.2017, Jan. 2018).
Here, we find the additional limitation(s) do not integrate the judicial
exception into a practical application. More particularly, the claims do not
recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) use a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state (see
MPEP § 2106.05(c)); or (iv) any other meaningful limitation (see MPEP
§ 2106.05(e)). See also Guidance, 84 Fed. Reg. at 55.
The additional limitations (i.e., those limitations not included in the
recited abstract idea) simply recite (1) the fact that certain data is sent to or
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received from the electronic device, (2) establishing a wireless connection
with the electronic device, (3) retrieving selected content from a database or
server, and (4) sending the retrieved content to the electronic device. Merely
receiving data from or sending data to an electronic device or establishing a
wireless connection with the device does not integrate the judicial exception
into a practical application. Instead, the claims merely use computers that
operate in their normal, expected manner. See DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1258–59 (Fed. Cir. 2014). Additionally, as
the court in Enfish explained, “the first step in the Alice inquiry . . . asks
whether the focus of the claims is on the specific asserted improvement in
computer capabilities . . . or, instead, on a process that qualifies as an
‘abstract idea’ for which computers are invoked merely as a tool.” Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016). As
discussed above, the focus of the pending claims is on authorizing a user to
purchase content, and the recited computing elements are invoked merely as
a tool. See Enfish, 822 F.3d at 1335–36.
The retrieving content and sending content to the device steps are
insignificant post-solution activity that merely obtain and present the
selected content. Guidance, 84 Fed. Reg. at 55 n.31 (explaining that post-
solution activity, such as outputting the results of an abstract idea, are
insufficient to integrate the abstract idea into a practical application). Such
post-solution activity does not confer patent eligibility. See MPEP
§ 2106.05(g); see also Parker v. Flook, 437 U.S. 584, 590 (1978) (adjusting
an alarm limit based on output of the abstract idea was insufficient to render
the claimed method patent eligible). Even considering the additional
elements in combination with the abstract idea, using the generic computer
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system to perform these steps, at most, limits the abstract idea to a particular
technological environment, which is insufficient to integrate the abstract
idea into a practical application. See Guidance, 84 Fed. Reg. at 55.
Appellant argues the claims improve the functioning of a computer, a
technology, or technical field and the claims provide a technical solution to a
technical problem. Reply Br. 13–15. Appellant asserts the claims solve the
technical problem that “excessive input data [is] required to be sent from an
electronic device to a server to request and receive electronic content” and
the claims’ ordered combination of elements addresses this problem by
automatically providing the server with the reader device’s identification
information. Reply Br. 13. Appellant contends the claims “improve the
function of the computer itself by requiring less processing and less
information needed to obtain new content, at both the reading device and the
server.” Reply Br. 14.
Here, the claims do not provide a solution to a technical limitation of
the computing device, but use the computing device to perform the abstract
idea. Accord Ans. 6–8, 15. Appellant identifies disclosures explaining that
the invention alleviates the need for a user to enter account information at
the time of purchase thereby reducing the time and data entry required to
purchase new content. See Reply Br. 14 (citing Spec. ¶¶ 16, 19, 48, 62).
These asserted improvements address the user experience, but Appellant has
not persuasively demonstrated that the claimed subject matter recites an
improvement to the computer itself or another technology. Appellant does
not persuasively explain, or identify disclosures in the Specification
supporting, the attorney argument that the claimed subject matter requires
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less processing at both the device and the server to obtain new content. See
Reply Br. 14.
Rather than reciting a technical solution to a technical problem, the
pending claims are more similar to those at issue in Ultramercial,
Amazon.com, and Smartflash. In those cases, the Federal Circuit determined
that the claims, which provided access to electronic content, were directed to
abstract ideas. Notably, the Federal Circuit has explained that the addition
of computer functionality to abstract concepts does not confer patent
eligibility. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363, 1370 (Fed. Cir. 2015).
For at least the foregoing reasons, the claims do not integrate the
judicial exception into a practical application. Accordingly, the claims are
directed to an abstract idea.
Guidance Step 2B (Inventive Concept/Significantly More)
Because we determine representative claim 1 is directed to an abstract
idea or combination of abstract ideas, we evaluate whether claim 1 includes
an inventive concept. See Guidance, 84 Fed. Reg. at 56. As stated in the
Guidance, many of the considerations to determine whether the claims
amount to “significantly more” under step two of the Alice framework
already are considered as part of determining whether the judicial exception
has been integrated into a practical application. Guidance, 84 Fed. Reg. at
56. Thus, at this point of the analysis, we determine whether the claims
(1) add a specific limitation, or combination of limitations, that is not well-
understood, routine, conventional activity in the field, or (2) simply append
well-understood, routine, conventional activities at a high level of generality.
Guidance, 84 Fed. Reg. at 56.
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Appellant argues the claims include significantly more than the
abstract idea because the steps related to authenticating and authorizing the
user based on the received device identifier are not part of the Examiner’s
characterization of the abstract idea. Reply Br. 16–19. As discussed above,
we characterize the abstract idea slightly differently than the Examiner.
In particular, the only additional elements recited in the claims are the
electronic device sending and receiving data, establishing a wireless
connection with the electronic device, retrieving selected content from a
database or server, and sending the retrieved content to the electronic device.
These elements and steps, considered alone and in combination, fail to
provide an inventive concept. When describing the device, the wireless
connection, and the sending, receiving, and retrieving steps, Appellant
describes and claims the system at a high level of generality.
Specifically, Appellant identifies the electronic device and the
wireless connection at a high level and as including generic devices
(“personal computers, portable computers (e.g., laptops or pocket PCs),
personal digital assistants (PDAs), portable gaming devices, wireless
phones, and the like”) and networks (e.g., “any one or combination of
multiple different types of networks, such as cable networks, the Internet,
and wireless networks”). Spec. ¶¶ 2, 17, 22, 41, Fig. 1, 5. Appellant also
describes the sending, retrieving, and receiving steps at a very high level.
See, e.g., Spec. ¶¶ 25, 28, 29, 69. In other words, the Specification indicates
that the additional elements are well-understood, routine, and conventional.
Accord Ans. 15 (explaining that the additional features are generic functions
performed by a generic computer (citing Spec. ¶ 17)).
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Our reviewing court has recognized that receiving, processing, and
storing data as well as receiving or transmitting data over a network are
well-understood, routine, and conventional activities. Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314 (Fed. Cir. 2016); In re TLI
Commc’ns LLC, 823 F.3d 607 (Fed. Cir. 2016); Elec. Power, 830 F.3d 1350.
Consistent with the Berkheimer Memorandum,4 we agree with the
Examiner’s findings that the claims merely recite generic computer
components (e.g., a configured computing system) performing generic
computing functions that are well-understood, routine, and conventional
(e.g., obtaining/receiving data, processing data, and presenting the results of
the data processing). See Mortg. Grader, 811 F.3d at 1324–25 (generic
computer components, such as an “interface,” “network,” and “database,”
fail to satisfy the inventive concept requirement); Alice, 573 U.S. at 226
(“Nearly every computer will include a ‘communications controller’ and [a]
‘data storage unit’ capable of performing the basic calculation, storage, and
transmission functions required by the method claims.”); buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer

4 On April 19, 2018, the Deputy Commissioner for Patent Examination
Policy issued a memorandum entitled: Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (i.e., “the Berkheimer Memorandum”)
(discussing the Berkheimer decision) (available at https://www.uspto.gov/
sites/default/files/documents/memo-berkheimer-20180419.PDF). Support
for a finding that an element was well-understood, routine, or conventional
may be shown by citation to one or more court decisions noting the well-
understood, routine, conventional nature of the element(s). See Berkheimer
Memorandum 3–4.
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receives and sends the information over a network—with no further
specification—is not even arguably inventive.”).
We are not persuaded that Appellant’s claims are similar to those held
eligible in DDR. See Reply Br. 18–19. In DDR Holdings, the Federal
Circuit determined “the claimed solution amount[ed] to an inventive concept
for resolving [a] particular Internet-centric problem,” i.e., a challenge unique
to the Internet. DDR Holdings, 773 F.3d at 1257–59; see Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (noting that
“[i]n DDR Holdings, we held that claims ‘directed to systems and methods
of generating a composite web page that combines certain visual elements of
a ‘host’ website with content of a third-party merchant’ contained the
requisite inventive concept”). The Federal Circuit explained that the patent-
eligible claims specified “how interactions with the Internet are manipulated
to yield a desired result . . . that overrides the routine and conventional
sequence of events ordinarily triggered by the click of a hyperlink.” DDR
Holdings, 773 F.3d at 1258. The court reasoned that those claims recited a
technological solution “necessarily rooted in computer technology” that
addressed a “problem specifically arising in the realm of computer
networks.” DDR Holdings, 773 F.3d at 1257.
Rather than reciting a technical solution rooted in computer
technology as in DDR, the pending claims are more similar to those at issue
in Ultramercial, Amazon.com, and Smartflash. In those cases, the Federal
Circuit determined that the claims, which provided access to electronic
content, were directed to abstract ideas. Notably, the claimed subject matter
does not change how the devices communicate, transfer content, or
otherwise alter how the recited components work. Instead, the claims
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merely use one piece of information as a proxy to identify a user instead of
requiring the user to enter credential, such as a username and password.
Appellant also argues the claims recite significantly more because
claims recite that “the particular electronic content [sent to the device] is
unique relative to items already stored in a memory of the electronic device
when sending the particular electronic content.” Reply Br. 19. However,
this limitation merely further defines the particular content sent to the device
and is part of the insignificant post-solution activity discussed above that
merely provides the result of the abstract idea. Appellant has not
persuasively explained why this limitation goes beyond what was well-
understood, routine, and conventional, or otherwise adds significantly more
to the abstract idea.
For the reasons discussed supra, we sustain the Examiner’s rejection
of claims 1–3, 5, 6, 27, 30, 33, 34, 38–41, 43, and 44 under 35 U.S.C. § 101.
See 37 C.F.R. § 41.37(c)(1)(iv).
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § References
or Basis
Affirmed Reversed
1–3, 5, 6, 27,
30, 33, 34,
38–41, 43, 44
112, first
paragraph
Written
Description
1–3, 5, 6, 27,
30, 33, 34,
38–41, 43, 44

1–3, 5, 6, 27,
30, 33, 34,
38–41, 43, 44
112, second
paragraph
Indefinite 1–3, 5, 6, 27,
30, 33, 34,
38–41, 43, 44
1–3, 5, 6, 27,
30, 33, 34,
38–41, 43, 44
103 Iino, Umekawa,
Biddle
1–3, 5, 6, 27,
30, 33, 34,
38–41, 43, 44

1–3, 5, 6, 27,
30, 33, 34,
38–41, 43, 44
101 Ineligible
Subject Matter
(Abstract Idea)
1–3, 5, 6, 27,
30, 33, 34,
38–41, 43, 44

Overall
Outcome
1–3, 5, 6, 27,
30, 33, 34,
38–41, 43, 44

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). See 37 C.F.R.
§ 41.50(f).
AFFIRMED