Ex parte Nakai
| Decision Date | 09 February 2021 |
| Docket Number | Appeal 2020-005560,Application 14/795,141 |
| Parties | Ex parte YASUMASA NAKAI, EIJI TOKUNAGA, KOICHI NAKAO, HITOSHI SAKAI, and TERUHIKO GODA Technology Center 3600 |
| Court | United States Patent and Trademark Office. United States Patent and Trademark Office, Patent Trial and Appeal Board |
Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and STEVEN M. AMUNDSON Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
Appellant[1] seeks our review under 35 U.S.C § 134(a) from a final rejection of claims 1, 3, 6-16, 18, 19, and 23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
According to the Specification, the invention concerns content distribution, in particular, the initial distribution of "reservation content" (unusable data) and the subsequent distribution of a modifying program that converts the initially distributed content to "normal content" (usable data). Spec. 1:11-18, 2:20-21, 15:22-16:17, 49:1-11; see also id. at 16:18-25, 25:23-26:2, 29:20-22, 30:21-23, 39:24-40:2. The Specification explains that downloading content from a content distribution server commonly occurs "on or after the sale start date and time." Id. at 15:17-18. The Specification also explains that "if access concentrates" at the server on "the sale start date and time," downloading takes considerable time and inconveniences a user. Id. at 15:18-21.
Hence, the invention endeavors to address those alleged deficiencies with "a reservation content [that] is downloaded in advance and a modifying program [that] is downloaded" at a later point, e.g., on or after the sale start date and time. Spec. 40:22-25. According to the Specification, that arrangement provides the following advantages: (1) "it is avoidable that access concentrates" at the server on "the sale start date and time," thus dispersing server load; and (2) "it is possible to execute immediately a reservation content by changing it to a normal content," thus improving user convenience. Id. at 40:22-414; see also id. at 1:19-24, 2:12-19, 6:15-17, 7:22-24, 16:15-17.
Independent claim 1 exemplifies the claims at issue and reads as follows:
Appeal Br. 41 (Claims App.).
As evidence of unpatentability under 35 U.S.C. §§ 102 and 103, the Examiner relies on the following prior art:
Name
Reference
Date
Downs et al. (“Downs”)
US 6, 226, 618 B1
May 1, 2001
Essa
US 2005/0177386 A1
Aug. 11, 2005
Chen et al. (“Chen”)
US 7, 849, 329 B2
Dec. 7, 2010
Claims 1, 3, 6-16, 18, 19, and 23 stand rejected under 35 U.S.C. § 112(a) for failing to comply with the written-description requirement. Final Act. 9-10.
Claims 1, 3, 6-16, 18, 19, and 23 stand rejected under 35 U.S.C. § 112(b) as indefinite for failing to particularly point out and distinctly claim the subject matter regarded as the invention. Final Act. 10-19.
Claims 1, 3, 6-16, 18, 19, and 23 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Final Act. 6-8.
Claims 1, 3, 6-15, 18, and 19 stand rejected under 35 U.S.C. § 102 as anticipated by Downs. Final Act. 20-21.
Claims 1, 3, 6-16, 18, and 23 stand rejected under 35 U.S.C. § 103 as unpatentable over Downs, Essa, and Chen. Final Act. 22-28.
We have reviewed the rejections in light of Appellant's arguments that the Examiner erred. For the reasons explained below, we concur with the Examiner's conclusions concerning patent ineligibility under §101, and thus affirm the Examiner's decision to reject all of the claims on appeal. See 37 C.F.R. § 41.50(a)(1). Further forthe reasons explained below, (1) we do not sustain the rejections based on § 112, and (2) we sustain the rejections based on the prior art except for claim 23. We provide the following to address and emphasize specific findings and arguments.
Section 112's first paragraph requires that the specification "contain a written description of the invention." 35 U.S.C. § 112(a). Thewritten-description requirement serves to "clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed." Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (alteration in original) (quoting Vas-Cathlnc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)); see also Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1344 (Fed. Cir. 2016).
"[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Ariad, 598 F.3d at 1351; Mentor Graphics Corp. v. EVE-USA, Inc., 851 F.3d 1275, 1296 (Fed. Cir. 2017). 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." Ariad, 598 F.3d at 1351. While the written-description requirement "does not demand any particular form of disclosure" or "that the specification recite the claimed invention in haec verba, a description that merely renders the invention obvious does not satisfy the requirement." Id. at 1352. The analysis for disclosure sufficiency may consider "such descriptive means as words, structures, figures, diagrams, formulas, etc." Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
Independent Claims 1 and 14-16:
"Change Data" and "Modifying Program"
Claim 1 includes the following limitation: "transmit, to the information processing apparatus, change data that comprises a modifying program configured to modify the second content to the first content after transmission of the second content." Appeal Br. 41. Independent claims 14-16 each include the following limitation: "transmit, to the information processing apparatus, change data that includes a modifying program configured to modify the second content to the first content after transmission of the second content." Id. at 44-46.
The Examiner determines that the Specification does not support the limitation "change data that includes a modifying program." Final Act. 9; see Ans. 9-10. The Examiner explains that the Specification discloses that "the modifying program has change data inside of it." Ans. 10.
Appellant contends that the Specification "clearly describes" that "the change data is data ofa modifying program (patch) that can modify the second content." Appeal Br. 29 (quoting Spec. 2:20-21); Reply Br. 12-13. Appellant also contends that the Specification indicates that "change data" corresponds to a "modifying program." Appeal Br. 29-30 (citing Spec. 29:17-30:3).
We agree with Appellant that the Specification reasonably conveys to those skilled in the art that the inventors had possession of the claimed subject matter as of the filing date. See Appeal Br. 29-30; Reply Br. 12-13. The Specification explains that "the game apparatus 20 receives a modifying program (patch) from the content server 12 according to an operation of the user, and changes this reservation content to a normal content by applying this modifying program to the reservation content." Spec. 16:22-25. The Specification similarly explains that "the game apparatus 20 accesses the content server 12 to download the modifying program (patch) and applies the downloaded modifying program to the reservation content," and then "the reservation content is changed to a normal content." Id. at 25:23-26:2. Thus, those skilled in the art would understand that "change data" corresponds to a "modifying program." See id. at 2:20-21, 16:22-25, 25:23-26:2, 29:20-22, 30:21-23, 39:24-40:2.
Independent Claim 1:
"A Server System Having Processing Circuitry"
Claim 1 includes the following limitation: "a server system having processing circuitry that includes, at least, a processor and a memory, the processing circuitry configured to" store and transmit data. Appeal Br. 41.
The Examiner determines that the "language of processing circuitry cannot be found" in the Specification. Final Act. 9. The Examiner also determines that no structure disclosed in the Specification "includes both a memory and a processor and performs each of the operations of store [the second content], transmit [the second content], and transmit [the change data]." Id. (emphasis by Examiner).
Appellant asserts that those skilled in the art would understand that "any combination of a [central processing unit] CPU [random-access memory] RAM, communication module, or any other element" shown in Figure 2 corresponds to the claimed "processing circuitry." Appeal Br. 31; Reply Br. 14. Appellant further asserts that the "hardware features that constitute the 'processing circuitry' would clearly perform any of the 'store second content,' 'transmit the second content to the...
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