Mark Nakada et al.

Patent Trials and Appeals Board

Nov 12, 2019

11397292 - (D) (P.T.A.B. Nov. 12, 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.
11/397,292 04/04/2006 Mark Nakada RTM-1006 6118
95084 7590 11/12/2019
Loza & Loza, LLP
Tyler Barrett, Esq.
305 N. Second Avenue #127
Upland, CA 91786
EXAMINER
NIGH, JAMES D
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
11/12/2019 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@lozaip.com
tyler@lozaip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MARK NAKADA and JON BUTLER
____________

Appeal 2018-002503
Application 11/397,292
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 2, 4–10, and 20–36. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed August 28, 2017) and Reply Brief (“Reply Br.,” filed January 8, 2018),
and the Examiner’s Answer (“Ans.,” mailed November 8, 2017) and Final
Office Action (“Final Act.,” mailed March 27, 2017). Appellant identifies
the real party in interest as Mediaport Entertainment, Inc. Appeal Br. 2.
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CLAIMED INVENTION
Appellant’s claimed invention “relates generally to systems and
methods for collecting and reporting of data” and, in particular to “systems
and methods for collecting and reporting real-time or substantial real-time,
data from remotely located devices to third parties” (Spec. ¶ 2).
Claims 1, 20, and 28 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method for real-time reporting, comprising:
[(a)] receiving digital content from content providers at a
server;
[(b)] transferring the digital content from the server to a
plurality of kiosks, each configured to distribute digital content
to an end-user and having a physical interface configured to
interact with the end-user, wherein the server and the plurality of
kiosks are each located at separate locations;
[(c)] collecting information from each of the plurality of
kiosks about one or more of, use of each of the plurality of kiosks,
transfer of digital content, and content distribution to end users;
[(d)] reporting to a third party on a substantially real-time
basis one or more elements of the collected information, wherein
the third party is outside a network of the server and at least one
kiosk of the plurality of kiosks, and wherein the one or more
elements are reported to the third party by either a kiosk of the
plurality of kiosks or the server without the third-party accessing
either of the kiosk or the server;
[(e)] customizing the digital content including bundled
advertising at the server based upon the reported information;
[(f)] delivering the customized digital content from the
server to each of the plurality of kiosks; and
[(g)] distributing the customized digital content to an
end-user.
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REJECTIONS
Claims 1, 2, 4–10, and 20–36 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claim 2 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement.
Claims 1, 2, 4–10, and 20–36 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter that Appellant regards as the invention.
Claims 1, 2, 4–10, and 20–36 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jacobson (US 2004/0158871 A1, published Aug. 12,
2004) and Ginter et al. (US 5,892,900, issued Apr. 6, 1999) (“Ginter”).
ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (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 Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
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directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., 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.’” Id. at 217–18 (alteration in original).
In rejecting claims 1, 2, 4–10, and 34 under 35 U.S.C. § 101, the
Examiner determined that independent claim 1 is directed to “receiving
content, transferring content, collecting information, reporting to a third
party, customizing content including advertising, delivering the customized
content and distributing the customized content,” i.e., to an abstract idea
similar to other concepts that courts have held abstract (Final Act. 7), and
that dependent claims 2, 4–10, and 34 simply add additional layers of
abstraction to the abstract idea of claim 1 (id. at 7–8). The Examiner also
determined that no inventive concept is present in these claims (id. at 8).
The Examiner applied substantially similar reasoning in rejecting
independent claims 20 and 28 and dependent claims 21–27, 29–33, 35, and
36 (id. at 8–13).
After Appellant’s briefs were filed in this appeal, and the Examiner’s
Answer mailed, the U.S. Patent and Trademark Office (the “USPTO”)
published revised guidance for use by USPTO personnel in evaluating
subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT
SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019)
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(the “2019 Revised Guidance”). That guidance revised the USPTO’s
examination procedure with respect to the first step of the Mayo/Alice
framework by (1) “[p]roviding groupings of subject matter that [are] . . .
considered an abstract idea”; and (2) clarifying that a claim is not “directed
to” a judicial exception if the judicial exception is integrated into a practical
application of that exception. Id. at 50. The 2019 Revised Guidance, by its
terms, applies to all applications, and to all patents resulting from
applications, filed before, on, or after January 7, 2019. Id.
Independent Claims 1 and 20 and Dependent Claims 2, 4–10, and 21–27
Appellant argues claims 1, 2, 4–10, and 20–27 as a group (Appeal
Br. 7–9). We select independent claim 1 as representative. The remaining
claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Step One of the Mayo/Alice Framework (2019 Revised Guidance,
Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
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use 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 (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea.
We are not persuaded that the Examiner erred in determining that
claim 1 is directed to an abstract idea. The Federal Circuit has explained
that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered
in light of the specification, based on whether ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether
the focus of the claims is on a specific improvement in relevant technology
or on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36. Here, it is clear from the
Specification, including the claim language, that the claims focus on an
abstract idea, and not on any improvement to technology and/or a technical
field.
The Specification is entitled “Systems and Methods for Providing
Near Real-Time Collection and Reporting of Data to Third Parties at Remote
Locations,” and states that the disclosure relates, in particular, to “systems
and methods for collecting and reporting real-time or substantial real-time,
data from remotely located devices to third parties” (Spec. ¶ 2). The
Specification describes, in the Background section, that most sales of digital
content, e.g., books, music, movies, etc., have been to users of computers
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that are connected to each other via networks of various types, e.g., the
Internet, and that it has become common, in these instances, to collect data
about the user and/or her activities for various purposes, including
advertising or sales (id. ¶¶ 3–5). Because users are not always located at a
computer when they desire to purchase digital content, sales of digital
content have begun using devices in remote locations, including stand-alone
devices (e.g., kiosks) in retail or other high-traffic areas (id. ¶ 6). In addition
to delivering digital content, these remote devices also can be used to
advertise to the user, as well as to collect and report data about the user and
her activities (id. ¶ 7). However, according to the Specification, the ability
to collect and report such data has been limited for various reasons, e.g.,
remote devices are often limited in the content they provide and the
information is often collected and reported to third parties in a slow and
cumbersome manner (id.).
The claimed invention is ostensibly intended to address this issue by
providing a system and method for collecting and reporting real-time or
substantially real-time data from remotely located devices to third parties
(id. ¶ 8). The Specification, thus, discloses that the system includes a
centrally located device where the digital content is stored, a remotely-
located device for delivering the digital content to an end-user, and means
for transferring the digital content from the central location to the remote
location. Information about the user and/or her activities, e.g., demographic
data, sales transaction data, survey data, system performance data, and
conversion tracking information, is collected at the remote location. The
collected information can then be reported to third parties on a real-time or
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substantially real-time basis and used for various purposes, including
customizing advertising for an individual user or a group of users (id.).
Consistent with this disclosure, claim 1 recites a method for real-time
reporting comprising: (1) receiving content at a server, i.e., “receiving digital
content from content providers at a server” (step (a)); (2) transferring the
content to a plurality of kiosks, i.e., “transferring the digital content from the
server to a plurality of kiosks, each configured to distribute digital content to
an end-user and having a physical interface configured to interact with the
end-user, wherein the server and the plurality of kiosks are each located at
separate locations” (step (b)); (3) collecting information from each of the
plurality of kiosks and reporting the information to a third party, i.e.,
collecting information from each of the plurality of kiosks
about one or more of, use of each of the plurality of kiosks,
transfer of digital content, and content distribution to end users;
[and]
reporting to a third party on a substantially real-time basis
one or more elements of the collected information, wherein the
third party is outside a network of the server and at least one
kiosk of the plurality of kiosks, and wherein the one or more
elements are reported to the third party by either a kiosk of the
plurality of kiosks or the server without the third-party accessing
either of the kiosk or the server
(steps (c) and (d)); (4) customizing the content to include advertisements
based on the reported information, i.e., “customizing the digital content
including bundled advertising at the server based upon the reported
information” (step (e)); (5) delivering the customized content to the kiosks,
i.e., “delivering the customized digital content from the server to each of the
plurality of kiosks” (step (f)); and (6) distributing the customized content,
including advertisements, to the end-user, i.e., “distributing the customized
digital content to an end-user” (step (g)). These limitations, when given
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their broadest reasonable interpretation, recite targeting advertising to an
end-user, i.e., a commercial interaction, which is a method of organizing
human activity and, therefore, an abstract idea. See 2019 Revised Guidance,
84 Fed. Reg. at 52 (describing “[c]ertain methods of organizing human
activity” as including “commercial or legal interactions (including . . .
advertising, marketing or sales activities or behaviors”)).
The Federal Circuit has consistently held that abstract ideas include
the concepts of collecting data, analyzing the data, and displaying the results
of the collection and analysis, including when limited to particular content.
See, e.g., 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., LLC v. Alstom S.A.,
830 F.3d 1350, 1354 (Fed. Cir. 2016) (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); see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018) (“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.”) (quoting Elec. Power Grp., 830 F.3d at 1353, 1355 (citing
cases)). Targeted advertising also is a longstanding marketing practice, and,
as recited in claim 1, is substantially similar to other practices that courts
have held abstract. See, e.g., Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007,
1013 (C.D. Cal. 2014), aff’d, 622 F. App’x 915 (Fed. Cir. 2015) (concluding
that targeting advertisements to certain consumers was no more than an
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abstract idea); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713 (Fed. Cir.
2014) (offering media content in exchange for viewing an advertisement);
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (tailoring information presented to a user based on
particular information); Affinity Labs of Texas, LLC v. Amazon.com Inc.,
838 F.3d 1266, 1271 (Fed. Cir. 2016) (customizing a user interface to have
targeted advertising based on user information).
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong 1), we next consider whether the claim recites
additional elements that integrate the judicial exception into a practical
application (Step 2A, Prong 2).
The only additional elements recited in claim 1, beyond the abstract
idea, are “a server”; “a plurality of kiosks,” including “a physical interface”;
and “a network” — all of which are disclosed in the Specification at a high
degree of generality, i.e., as generic computer components (see, e.g.,
Spec. ¶¶ 21, 33–39). We find no indication in the Specification, nor does
Appellant direct us to any indication, that the operations recited in claim 1
invoke any assertedly inventive programming, require any specialized
computer hardware or other inventive computer components, i.e., a
particular machine, or that the claimed invention is implemented using other
than generic computer components to perform generic computer functions.
See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) (“[A]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.”).
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We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in technology and/or a technical field to the claimed invention
or that otherwise indicates that the claimed invention integrates the abstract
idea into a “practical application,” as that phrase is used in the 2019 Revised
Guidance.2
Appellant argues that claim 1 recites “unique and specific sets of
communications and operations by and between content providers, servers,
kiosks, third parties, and end-users” and that “[t]he collection of all of these
various communications and operations represent[s] new ideas that were not
previously well known and were not routine activity” (Appeal Br. 7–8). Yet,
Appellant misapprehends the controlling precedent to the extent Appellant
maintains that claim 1 is not directed to an abstract idea, and is patent
eligible because the claim is allegedly novel and/or non-obvious. Neither a
novelty finding nor a non-obviousness determination automatically leads to
the conclusion that the claimed subject matter is patent eligible.
“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim

2 The 2019 Revised Guidance references the MANUAL OF PATENT
EXAMINING PROCEDURE (“MPEP”) § 2106.05(a)–(c) and (e) in describing
the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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directed to a purely abstract idea is, nonetheless, patent ineligible. See
Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188–89
(1981) (“The ‘novelty’ of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101 categories of possibly patentable subject
matter.”).
We also are not persuaded of Examiner error by Appellant’s argument
that various features recited in the claim are not readily performed by
humans (Appeal Br. 8). Indeed, a substantially similar argument was
expressly rejected by the Court in Alice. See Alice Corp., 573 U.S. at 223
(“[T]he mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.”). Although “a
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under § 101,” CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011), it does not
automatically follow that methods that arguably cannot be performed
entirely in the human mind or manually, using pen and paper are, therefore,
not directed to abstract ideas.
Responding to the Examiner’s Answer, Appellant argues in the Reply
Brief that the collection of the various communications and operations
recited in claims 1 and 20 represents a technological improvement (Reply
Br. 2–3). Quoting limitation (d) of claim 1, Appellant, thus, notes that the
claimed features “enable reporting directly to a third party on a real-time
basis, without the third-party needing to request the information” (id. at 2).
Appellant argues that “[t]his enables the third party to obtain the information
almost immediately when it is available, and to then more efficiently
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customize digital content for future distribution” (id. at 2–3). But, we are
not persuaded that this is a technological improvement as opposed to an
improvement to the abstract idea of targeted advertising. As described
above, we find no indication in the Specification, nor does Appellant direct
us to any indication, that the operations recited in claim 1 invoke any
assertedly inventive programming, require any specialized computer
hardware or other inventive computer components, or that the claimed
invention is implemented using other than generic computer components
operating in their normal, routine, and ordinary capacity.
The Specification describes, as mentioned above, that in addition to
delivering digital content, devices in remote locations also can be used to
advertise to a user, and collect and report data regarding the user and her
activities. Yet, according to the Specification, the ability to collect and
report this data has been limited for various reasons. It, thus, clearly appears
from the Specification that the focus of the claimed invention is on
addressing a business objective (i.e., collecting information regarding users
and their activities for use in advertising to these users), and not on any
claimed means for accomplishing that goal that improves technology.
We also are not persuaded by Appellant’s argument that “transferring
the digital content from one of the one or more servers to one or more kiosks
on a semi-dynamic basis,” as recited in claim 20, amounts to a technological
improvement (Reply Br. 3). Appellant argues that “[r]eceiving the data on a
semi-dynamic basis[, i.e., at ‘regular intervals’ (Spec. ¶ 42),] enables the
server to transfer content based on patterns of access that are determined to
make the most efficient use of the kiosk” (id.) — a process that Appellant
maintains is beneficial compared to real-time transfers that can result in
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delays for the end-user and inefficient use of network connectivity resources
and static transfers that leave a kiosk with a fixed set of content (id.). But,
again we are not persuaded that this is a technological improvement as
opposed to an improvement in a business practice, i.e., digital content sales,
where, as here, there is no indication in the Specification that any inventive
computer components are required, that any allegedly inventive
programming is invoked, or that data are transferred to the kiosks using
other than generic components operating in their normal, routine, and
ordinary capacity.
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim are no more than generic
components used as tools to perform the recited abstract idea. As such, they
do not integrate the abstract idea into a practical application. See Alice
Corp., 573 U.S. at 223–24 (“[W]holly generic computer implementation is
not generally the sort of ‘additional feature[e]’ that provides a ‘practical
assurance that the process is more than a drafting effort designed to
monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)).
Accordingly, we agree with the Examiner that claim 1 is directed to an
abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance,
Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 adds specific limitations beyond the judicial exception that
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are not “well-understood, routine, conventional activity” in the field, or
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception.
The Examiner determined here, and we agree, that the only claim
elements beyond the abstract idea are “a server”; “a plurality of kiosks,”
including “a physical interface”; and “a network,” i.e., generic computer
components used to perform generic computer functions (Final Act. 8) — a
determination amply supported by, and fully consistent with the
Specification (see, e.g., Spec. ¶¶ 21, 33–39).3
Appellant cannot reasonably contend, nor does Appellant, that there is
a genuine issue of material fact regarding whether operation of these
components is well-understood, routine, or conventional, where, as here,
there is nothing in the Specification to indicate that the operations recited in
claim 1 require any specialized hardware or inventive computer components
or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions, e.g.,
receiving, storing, processing, and transmitting information. Indeed, the

3 The Office’s April 19, 2018 Memorandum to the Examining Corps from
Deputy Commissioner for Patent Examination Policy, Robert W. Bahr,
entitled, “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.),” available at https://www.uspto.gov/sites/default/files/documents/
memo-berkheimer-20180419.PDF, expressly directs that an examiner may
support the position that an additional element (or combination of elements)
is not well-understood, routine or conventional with “[a] citation to an
express statement in the specification . . . that demonstrates the well-
understood, routine, conventional nature of the additional element(s)” (id.
at 3).
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Federal Circuit, in accordance with Alice, has “repeatedly recognized the
absence of a genuine dispute as to eligibility” where claims have been
defended as involving an inventive concept based “merely on the idea of
using existing computers or the Internet to carry out conventional processes,
with no alteration of computer functionality.” Berkheimer v. HP, Inc.,
890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (citations
omitted); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1291
(Fed. Cir. 2018) (“BSG Tech does not argue that other, non-abstract features
of the claimed inventions, alone or in combination, are not well-understood,
routine and conventional database structures and activities. Accordingly, the
district court did not err in determining that the asserted claims lack an
inventive concept.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner’s rejection of claim 1, and claims 2, 4–10, and 20–27, which fall
with claim 1.
Independent Claim 28 and Dependent Claims 29–33
Appellant’s arguments with respect to claim 28 (Appeal Br. 9–11) are
substantially similar to Appellant’s arguments with respect to claim 1, and
are similarly unpersuasive of Examiner error. As with clam 1, Appellant
argues in the Reply Brief that claim 28 “represents a technological
improvement realized through an ordered combination of elements” (Reply
Br. 4). Substantially quoting the claim language, Appellant maintains that
by providing a network of remote kiosk devices, the claimed steps reduce
the burden on the server, i.e., by receiving end-user orders from other remote
devices, compiling each of the end-user orders, and distributing each order
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to each respective end-user (id.), and that the burden on other remote devices
also is reduced by the claimed remote device, which reports information
either to the other remote devices or to a third party, and distributes each
order to each respective end-user (id. at 4–5).
Appellant argues that “[t]hese features represent[ ] a technological
improvement unique to digital media distribution through a plurality of
networked kiosks, which technological improvement is realized through the
ordered combination of elements” (id. at 5). But, as with claim 1, we are not
persuaded that providing a network of remote kiosk devices, as recited in
claim 28, is a technological improvement as opposed to an improvement in a
business practice, i.e., digital content sales, where, as here, there is no
indication in the Specification that any inventive computer components or
unconventional arrangement of components is required, that any allegedly
inventive programming is invoked, or that the operations recited in claim 28
are performed using other than generic components operating in their
normal, routine, and ordinary capacity.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 28 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner’s rejection of claim 28, and claims 29–33, which are not argued
separately.
Dependent Claims 34–36
Claims 34–36 depend from independent claims 1, 20, and 28,
respectively. Appellant asserts that claims 34–36 are not directed to an
abstract idea, i.e., that dependent claims 34–36 do not recite any known
fundamental economic practice, nor any method of organizing human
activity (Appeal Br. 11). Appellant notes that claim 34 recites “reporting
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from the server to at least one kiosk . . . at least one of the locations of
specific content at other kiosks of the plurality of kiosks, aggregated data
derived from the collected information associated with one or more other
kiosks . . . or statistical data associated with one or more other kiosks,” and
that claims 35 and 36 include similar features (id. at 11–12 (emphasis
omitted)). And Appellant ostensibly maintains that claims 34–36 are patent
eligible because these features “represent new ideas, not previously well
known, and not routine activity” (id. at 12).
Appellant’s argument is not persuasive of Examiner error because, as
described above, neither a novelty finding nor a non-obviousness
determination automatically leads to the conclusion that the claimed subject
matter is patent eligible. A novel and non-obvious claim directed to a purely
abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But, the specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, the inventors were
in possession of the claimed invention. See id.
Independent claim 1, as described above, recites a method for real-
time reporting comprising, inter alia, “transferring the digital content from
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the server to a plurality of kiosks . . . wherein the server and the plurality of
kiosks are each located at separate locations.” Claim 2 depends from
independent claim 1, and recites that “transferring the digital content from
the server to a plurality of kiosks comprises transferring digital content to a
wireless networked kiosk, a cabled networked kiosk, and a stand-alone non-
networked kiosk.”
The Examiner maintains here that the Specification lacks written
description support for “transferring digital content to a wireless networked
kiosk,” as recited in claim 2, because “no particular implementation of a
wireless network is disclosed in the Specification” (Final Act. 14–15). The
Examiner, thus, takes the position that because claim 1 recites that the server
and the plurality of kiosks are each located at separate locations, some
teaching regarding the particular wireless network is required within the four
corners of the written disclosure “as many types of wireless networks such
as 802.11, Bluetooth, IRDA, etc. would not be viable wireless networks
when used between devices that are ‘each located at separate locations’ as
the transmission range is limited to ten meters or less” (id. at 15).
Appellant argues, and we agree, that the Specification includes the
requisite written description support at least in paragraph 39, which
“expressly discloses wireless communications of various networking
technologies” (Reply Br. 5). Paragraph 39 states that “[t]he various
components of the system can be electronically connected to each other
using any means known in the art,” and explains that examples of these
connections include “Ethernet, frame relay, DSL, satellite uplink, cable
modem, analog modem, fibre channel, infrared and microwave
transmissions, wireless communications of various types, and other
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networking technologies known in the art.” The paragraph further explains
that such connections may be constructed through a publicly accessible
network, e.g., the Internet, and that a private network connection may also
be used to ensure the integrity of the content transferred via this connection.
Further written description support also is provided, as Appellant
observes (Reply Br. 5), in provisional application 60/667,638, which the
present application incorporates in its entirety by reference (see Spec. ¶ 1).
The provisional application discloses at page 6, with reference to Figure 1,
that “LAN/WAN 102 connects to multiple . . . distributed content kiosks
represented by wireless kiosk 160, cabled kiosk 165, stand-alone
kiosk 170 . . . , or kiosk group 175 by way of WAN via Internet 155, using
convention[al] network and Internet technology, well known by those of
ordinary skill in the art,” and further discloses, at page 10 with reference to
Figure 2, a distributed digital content kiosk system 100, including, inter alia,
LAN/WAN 102, Content Server 125, and WAN via Internet 155. See also
Provisional Application, 7–9, 11–13.
We agree with Appellant that the Specification provides adequate
written description support such that a person skilled in the art would
understand that the inventors were in possession of the claimed invention,
including “transferring digital content to a wireless networked kiosk,” as
recited in claim 2, at the time the application was filed. Specifically, we find
that the Specification provides sufficient evidence that the inventors were in
possession of the claimed functionality at the time of filing, i.e., the
Specification shows possession by the inventors of how “transferring digital
content [by a server] to a wireless networked kiosk [located at a separate
location]” is achieved. See Vasudevan Software, Inc. v. MicroStrategy, Inc.,
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782 F.3d 671, 683 (Fed. Cir. 2015) (“The more telling question is whether
the specification shows possession by the inventor of how [the claimed
function] is achieved.”). In particular, a person of ordinary skill in the art,
on reviewing the Specification, would understand that the inventors were in
possession of a wireless network for transferring digital content from a
server to a wireless networked kiosk, based on the capabilities and
limitations of the network, including, e.g., its transmission range and the
distance between the kiosk and the server.
Therefore, we do not sustain the Examiner’s rejection of claim 2
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Indefiniteness
In rejecting claims 1, 2, 4–10, and 20–36 under 35 U.S.C. § 112,
second paragraph, the Examiner takes the position that the terms
“substantially real-time basis” and “semi-dynamic basis,” as used in
independent claims 1, 20, and 28, are relative terms and render the claims
indefinite because “the [S]pecification does not provide a standard for
ascertaining the requisite degree, and one of ordinary skill in the art would
not be reasonably apprised of the scope of the invention” (Final Act. 15).
Appellant maintains, and we agree, that a person of ordinary skill in
the art would understand what is claimed when the claims are read in light of
the Specification (Appeal Br. 14–15 (citing Spec. ¶¶ 40, 42–44, 57; Figs. 3a,
3b, 3c)), namely, that the term “substantial real-time basis” refers to the
transfer of data at a rate slightly less immediate than “real-time,” typically
due to electronic processing delay, and that “semi-dynamic” means that the
sever downloads content to the storage media at a kiosk at regular intervals.
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Therefore, we do not sustain the Examiner's rejection of claims 1, 2,
4–10, and 20–36 under 35 U.S.C. § 112, second paragraph. See
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576
(Fed. Cir. 1986) (The test for definiteness under 35 U.S.C. § 112, second
paragraph, is whether “those skilled in the art would understand what is
claimed when the claim is read in light of the specification.”).
Obviousness
Independent Claims 1 and 20 and Dependent Claims 2, 4–10, and 21–27
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1 and 20 under 35 U.S.C. § 103(a) because
Jacobson, on which the Examiner relies, fails to disclose or suggest
“reporting to a third party on a substantially real-time basis one or more
elements of the collected information,” as recited in claim 1, and similarly
recited in claim 20 (Appeal Br. 18–20).
Jacobson is directed to an apparatus for dispensing music, video
games, movies, and other multimedia onto blank digital media, e.g., CDs or
DVDs), for sale or rental (see, e.g., Jacobson, Abstract), and discloses that in
a preferred embodiment, each apparatus is connected, as part of a larger
network of apparatuses, to a central operating unit (id. ¶ 47). Jacobson
discloses in paragraphs 93 and 94, cited by the Examiner (Final Act. 18),
that rental and purchase activity is reported to the central operating unit’s
remote server, and that electronic and physical marking of each disk is used
to enable copyright owners to audit each apparatus to verify that royalties
were properly calculated for every disk that was dispensed by the machine.
However, we agree with Appellant that there is nothing in the cited
paragraphs that discloses or suggests that the remote server reports the rental
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and purchase activity to a third party, e.g., the copyright owner, on a
substantially real-time basis, as called for in claims 1 and 20 (Appeal Br. 18–
19). Instead, Jacobson discloses that the remote server collects and
maintains the information so that a copyright owner can later access the
system to verify that royalties were correctly paid (id.).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1 and 20 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the rejection of dependent claims 2, 4–19,
and 21–27. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
(“dependent claims are nonobvious if the independent claims from which
they depend are nonobvious”).
Independent Claim 28 and Dependent Claims 29–36
Independent claim 28 includes language substantially similar to the
language of claim 1, and stands rejected based on the same rationale with
respect to Jacobson applied with respect to claim 1 (Final Act. 23–24).
Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 103(a) of independent claim 28, and claims 29–36, which depend
therefrom, for the same reasons set forth above with respect to claim 1.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–10,
20–36
101 Eligibility 1, 2, 4–10,
20–36

2 112, first
paragraph
Written Description 2
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–10,
20–36
112, second
paragraph
Indefiniteness 1, 2, 4–10,
20–36
1, 2, 4–10,
20–36
103 Jacobson, Ginter 1, 2, 4–10,
20–36
Overall
Outcome
1, 2, 4–10,
20–36

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.
§ 1.136(a)(1)(iv).

AFFIRMED