Ex parte Mosquera

• Decision Date: 14 May 2020
• Docket Number: Application 13/271,131,Appeal 2019-001260
• Parties: Ex parte LUIS D. MOSQUERA Technology Center 3600
• Court: Patent Trial and Appeal Board

Ex parte LUIS D. MOSQUERA Technology Center 3600

Appeal 2019-001260

Application 13/271, 131

United States Patent and Trademark Office, Patent Trial and Appeal Board

May 14, 2020

FILING DATE: 10/11/2011

Before JEAN R. HOMERE, MICHAEL J. STRAUSS, and JEREMY J. CURCURI, Administrative Patent Judges.

DECISION ON APPEAL [1]

STRAUSS, ADMINISTRATIVE PATENT JUDGE

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant [2] appeals from the Examiner's decision to reject claims 1-8, 11-18, and 21. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.

Summary of the Disclosure

Appellant's claimed subject matter relates to the acquisition, downloading and opening of digital content. Spec., Title.

Illustrative claims

Claims 1 and 21, reproduced below with element labels added in brackets and disputed limitations emphasized in italics, are illustrative of the claimed subject matter:

1. A method for acquiring and accessing digital content on a local electronic device comprising

[(a)] receiving, on the local electronic device, an indication from a user of the local device of an item of digital content to be acquired

[(b)] transmitting, from the local electronic device, the indication of the item of digital content to a remote server

[(c)] receiving, on the local electronic device, a download of the item of digital content from the remote server

[(d)] receiving, on the local electronic device, parameters associated with the item of digital content, the parameters containing a trigger indicating an application required to access the downloaded item of digital content, wherein the parameters are contained in metadata of the downloaded item of digital content;

[(e)] reading, by software in the local electronic device, the trigger contained in the metadata;

[(f)] the trigger causing the software in the local electronic device to automatically launch the application on the local electronic device, the trigger containing an identification of the downloaded item of digital content; and

[(g)] automatically accessing the downloaded item of digital content on the local electronic device using the launched application and the identification contained in the trigger.

21. A device for acquiring and accessing digital content on a local electronic device comprising:

[(a)] a user interface subsystem operable on the local electronic device to receive an indication from a user of the local electronic device of an item of digital content to be acquired;

[(b)] an input output subsystem operable on the local electronic device to transmit the indication of the item of digital content to a remote server, receive a download of the item of digital content from the remote server, and receive parameters associated with the item of digital content, the parameters containing a trigger indicating an application required to access the downloaded item of digital content, the trigger containing an identification of the downloaded item of digital content, the parameters being contained in metadata of the downloaded item of digital content; and

[(c)] an operating system operable on the local electronic device to read the trigger and automatically launch the application and automatically access the item of digital content using the launched application and the identification contained in the trigger.

REFERENCES

The prior art relied upon by the Examiner is:

Name	Reference	Date
Clark	US 6, 704, 733 B2	Mar. 9, 2004
Kontio	US 2007/0112676 A1	May 17, 2007
Heyworth	US 2008/0313302 A1	Dec. 18, 2008
Hendricks	US 8, 429, 028 B2	Apr. 23, 2013

REJECTIONS

Claim 21 stands rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter. Final Act. 2-3.

Claims 1-8, 11-18, and 21 stand rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Final Act. 4-7.

Claims 1, 2, 4-8, 11-13, 15, 16, 18, and 21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Clark, Kontio, and Heyworth. Id. at 8-19.

Claims 3, 14, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Clark, Kontio, and Hendricks. Id. at 20-21.

STANDARD OF REVIEW

The Board undertakes a limited de novo review of the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 U.S.P.Q.2d 1072, 1075 (BPAI 2010) (precedential).

OPINION

We agree with Appellant that the Examiner erred in rejecting claims 1-8, 11-18, and 21 under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. However, we are not persuaded the Examiner erred in rejecting claim 21 under 35 U.S.C. § 101 as directed to software per se or in rejecting claims 1-8, 11-18, and 21 under 35 U.S.C. § 103(a). In connection with these latter rejections, we agree with and adopt the Examiner's findings and reasoning in the Final Office Action and the Answer as our own and add any additional findings of fact appearing below for emphasis.

35 U.S.C. § 101 Rejection - Software Per Se

The Examiner rejects claim 21 under 35 U.S.C. § 101 because the Examiner determines the claim encompasses software per se and, thus, is not within one of the four classes of statutory subject matter. Final Act. 2-3; Ans. 3-4. According to the Examiner, the claimed "device" recited in the preamble of claim 21 "does not assert the use of hardware that provides structure and that contains the interpreted software or computer code." Final Act. 3. The Examiner explains, as follows:

The device is recited to be part of the local electronic device, with performing subsystems. The interpretation of the "device" is a program or application residing in the local device, with program sub-components that could perform the respective functions. The devices recited in paragraph [22] of the Specification are describing possible devices of the local electronic device, all of them capable of running the application as recited. However, the recitations of devices as stated in the Specification can also be interpreted as software under the broadest reasonable interpretation. The claim and the Specification lack a positive recitation of the hardware that is capable of performing the claim method steps.

Ans. 3-4.

Appellant contends the rejection is improper because (1) claiming the invention as a device must be interpreted as requiring hardware in view of Appellant's disclosure; (2) to receive user input, the user interface necessarily requires hardware; and (3) the input output system must also include hardware to enable it to transmit an indication of the item of digital content to a remote server as claimed. Appeal Br. 7. In particular, Appellant argues

Paragraph [22] (in the application as filed) explicitly describes a device: "[l]ocal device 130 is an electronic device such as a personal computer, an eBook reader, a smart phone or other electronic device that the user 105 can use to access the digital content control server 150." Clearly, this paragraph describes devices that are hardware based. Any interpretation of the claim term "device" that excludes these hardware embodiments is unreasonable.

Id. at 7.

Section 101 defines patentable subject matter: "[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C. § 101.

In issues involving claims under examination, we interpret Appellant's claims according to their broadest reasonable interpretation consistent with the specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). "Generally . . . the preamble does not limit the claims." Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1346 (Fed. Cir. 2002). Nonetheless, the preamble may be construed as limiting "if it recites essential structure or steps, or if it is'necessary to give life, meaning, and vitality' to the claim." Catalina Mktg. Int'l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002), quoting Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). A preamble is not regarded as limiting, however, "when the claim body describes a structurally complete invention such that deletion of the preamble phrase does not affect the structure or steps of the claimed invention." Catalina, 289 F.3d at 809. Furthermore, the preamble has no separate limiting effect if, for example, "the preamble merely gives a descriptive name to the set of limitations in the body of the claim that completely set forth the invention." IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434-35 (Fed. Cir. 2000). See also Am. Med. Sys., Inc. v. Biolitec, Inc., 618 F.3d 1354, 1359 (Fed. Cir. 2010).

Appellant's arguments are unpersuasive of reversible Examiner error. Claim 21 labels the claimed invention a "device," not the argued "local device" alleged to be disclosed as hardware. Appeal Br. 5. To the extent the "local electronic device" recited in the preamble of claim 21 corresponds to the hardware implemented local device 130, that local electronic device is not claimed. Instead, the "local electronic device" is recited only in describing an intended use of the claimed device defined by the body of the claim, i.e., "[a] device for acquiring and accessing digital content on a local electronic device, [the device] comprising . . . ." That is, although the device of claim 21 operates on the argued local electronic device, it is distinct from the local electronic...