DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 21-30 are pending in this case. Claims 1-6, 8-13, and 15-20 are currently canceled, while claims 7 and 14 had been canceled previous to the Appeal. Claims 21-30 are newly-added and under examination in this case.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on November19, 2025, has been entered.
Response to Arguments
Applicant's arguments filed November19, 2025, have been fully considered but they are not persuasive.
Applicant argues, regarding the claims in their current version, that the claims do not recite an abstract idea.
Examiner respectfully disagrees.
Specifically, Applicant argues that claims 21 and 26 do not fall under any of the three specific categories enumerated by MPEP $2106.04(a).
Examiner respectfully disagrees.
Applicant submits that independent claim 21 does not fall under any of the three specific categories enumerated by MPEP §2106.04(a). Applicant submits independent claims 21 and 26 are directed to using universally unique identifier (UUID) retrieved from a physical medium storing a first copy of the digital media content to securely bind digital media content to an entitled user, and restricting another user in possession of the physical medium but not associated with the UUID from streaming a second copy of the digital media content from a server over a network, while such another user is able to play back the first copy of the digital media content stored in the physical medium. Aan that as such, independent claims 21 and 26 do not fall under any of the three specific categories mentioned above, and are not directed to an abstract idea.
Examiner respectfully disagrees.
Under Prong 1, the recitations of “in response to determining that the UUID is registered in the UUID database and associated with the first user. . . permitting the first user to stream a second copy of the digital media content from a server over a network; and in response to determining that the UUID is not associated with the first user, . . . restricting the first user from streaming the second copy of the digital media content from the server over the network” each recite both a commercial and a legal interaction, as well as sales activity or behavior, and a business relation. Thus, the claims include recitations that are grouped within the "certain methods of organizing human activity."
Further, Applicant also submits arguments relying on Ancora to argue that the invention claimed is not directed to an abstract idea.
First, In the Ancora Techs case, there was modification of the computers BIOS and memory structure that provided the improvement which is not present in the instant case.
Note also that Ancora was decided "[u]nder Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), and related authorities," and that the Guidance applied herein takes into account such relevant case law pertaining to patent eligibility, including Enfish. Ancora, 908 F3.d 1343, 1344; Guidance, nn.9- 11, 17-19.
Secondly, the Applicant points to Ancora for its statement that "[i]mproving security - here, against a computer's unauthorized use of a program - can be a non-abstract computer functionality improvement if done by a specific technique that departs from earlier approaches to solve a specific computer problem," the facts of Ancora are distinguishable from those of the present appeal. In Ancora, "the claimed computer experienced a significant modification by storing a specific license record in a particular, modifiable, non-volatile portion in the computer's Basic Input/Output System (BIOS)."
The invention of Ancora is directly and technologically integrated into the recited hardware, namely the computer's BIOS, such that the computer functions differently than before, and allows it to be effectively used to improve computer security and software verification. In other words, the invention in Ancora integrates the recited judicial exception into a practical application. Similar facts are not present in the instant case. The abstract ideas recited in claim 21 and 26 are not integrated into a practical application by the additionally recited elements as in Ancora .
Applicant then argues Smartflash.
Examiner respectfully disagrees.
Firstly, Smartflash is not binding. In addition, Smartflash decision is from 2015, well before the Patent Office's Guidance applicable here, which takes into consideration the patent eligibility law as addressed by our reviewing courts. Furthermore, the district court's basis for determining eligibility included its assessment that "the asserted claims here recite specific ways of using distinct memories, data types, and use rules that amount to significantly more than the underlying abstract idea." Smartflash, 2015 WL 661174 *8. While the subject matter of Smartflash is similar to that of claim 21 and 26, the facts of this case are not analogous to those of Smartflash. Applicant fails to equate the server in the instant case to the technological improvements in Smartflash, and instead, focuses on the result that may be attained by implementation of the abstract idea.
Applicant further argues that the claims in this case, as in DDR holdings, the claims amount to significantly more than an abstract idea.
Examiner respectfully disagrees.
In the instant case, the claims are not similar to DDR Holdings. In the case of DDR Holdings, the claim addresses the problem of retaining Web site visitors from being diverted from a host’s web site to an advertiser’s Web site, for which “the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer network". Here, however, the instant claim is directed to abstract idea of using universally unique identifier (UUID) retrieved from a physical medium storing a first copy of the digital media content to securely bind digital media content to an entitled user, and restricting another user in possession of the physical medium but not associated with the UUID from streaming a second copy of the digital media content from a server over a network, while such another user is able to play back the first copy of the digital media content stored in the physical medium. Unlike the situation in DDR Holdings, Applicant did not identify any problem particular to computer networks and/or the Internet that claim allegedly overcome.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever 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.
Claims 21-30 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 26-30 are directed to a system. Claims 21- 25 are directed to a method. Therefore, these claims fall within the four statutory categories of invention.
The claims recites licensing content. Specifically, the claims recite using universally unique identifier (UUID) retrieved from a physical medium storing a first copy of the digital media content to securely bind digital media content to an entitled user, and restricting another user in possession of the physical medium but not associated with the UUID from streaming a second copy of the digital media content from a server over a network, while such another user is able to play back the first copy of the digital media content stored in the physical medium, which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 54 (January 7, 2019)). Accordingly, the claims recite an abstract idea (See pages 7, 10, Alice Corporation Pty. Ltd. v. CLS Bank International, et al., US Supreme Court, No. 13-298, June 19, 2014; 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 53-54 (January 7, 2019)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54-55 (January 7, 2019)), the additional element(s) of the claim(s) such as a playback device and database, merely use a computer as a tool to perform an abstract idea and/or generally link the use of a judicial exception to a particular technological environment. Specifically, the database and playback device perform the steps or functions of using universally unique identifier (UUID) retrieved from a physical medium storing a first copy of the digital media content to securely bind digital media content to an entitled user, and restricting another user in possession of the physical medium but not associated with the UUID from streaming a second copy of the digital media content from a server over a network, while such another user is able to play back the first copy of the digital media content stored in the physical medium. The use of a processor/computer as a tool to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claims do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or medical condition (Vanda Memo), the claims do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claims do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52, 56 (January 7, 2019)), the additional element(s) of using a server, processor and memory to perform the steps amounts to no more than using a computer or processor to automate and/or implement the abstract idea of receiving information, determining content of the information, and recording information. As discussed above, taking the claim elements separately, the server, processor and memory perform(s) the steps or functions of receiving information, determining content of the information, and recording information. These functions correspond to the actions required to perform the abstract idea. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claims are not patent eligible.
Claims 22-25 and 27-30 are rejected under similar criteria as each merely elaborates on the abstract idea.
Conclusion
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/Cristina Owen Sherr/ Examiner, Art Unit 3697
/JOHN W HAYES/ Supervisory Patent Examiner, Art Unit 3697