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 .
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 1-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a mental process of comparing metadata of content and transmitting reference segments of the compared content without significantly more. Independent claims 10 and 18 add repairing and outputting the content item, which is similarly directed to a mental process.
Representative claim 1 recites:
“receiving, by a computing device, from a user device and based on a request for playback of a previously recorded content item at the user device, metadata associated with the previously recorded content item;
determining, by the computing device and based on a comparison between the metadata and reference metadata associated with a reference content item associated with the previously recorded content item, an issue with a portion of the previously recorded content item at the user device;
determining, based on the issue with the portion of the previously recorded content item, a reference segment of the reference content item that corresponds with the portion of the previously recorded content item; and
sending, by the computing device and to the user device, the reference segment of the reference content item that corresponds to the portion of the previously recorded content item.”
Claims 10 and 18 include largely similar subject matter, but include a “generating …. a repaired content item” step and a “causing … playback of the repaired content item” step.
These claims are directed to a mental process because they are directed towards receiving media content, analyzing media content to determine if the media content is valid, receiving data to repair the media content, and (for only claims 10 and 18), repairing the media content and playing the repaired media content. A human being equipped with a generic computer is capable of performing these functions.
Claims 1, 10, and 18 include additional elements in the form of the “receiving” and “sending” steps and “a user device” and “a computing device.” Claims 10 and 18 include additional elements in the form of the “generating .. a repaired content item” and “causing playback” of the repaired content item steps.
This judicial exception is not integrated into a practical application because the additional elements identified in the claims do not appear to improve the processing of a computer, require the use of a specific machine, or providing a technological solution to a technological problem.
Regarding the additional elements of the claims, it is noted that receiving content is merely pre-solution data gathering (see MPEP 2106.05(g)). Sending content does not appear to improve the functioning of a computer or any technology or technical field because they involve the mere transmission of instructions (see MPEP 2106.05(a)). The recitation of generic hardware is little more than using a computer to perform an abstract idea, see MPEP 2106.05(f). Playback of content, or displaying content, is insignificant extra-solution activity and is well known (see MPEP 2106.05(g)(3)). Repairing content via replacing portions of the content, as a concept without additional claimed details regarding the repairing, was conventional in the art before the earliest filing date of the application and does not appear to improve the processing of a computer, require the use of a specific machine, or providing a technological solution to a known technological problem (see McCuller (US Pre-Grant Publication 2007/0168708) paragraph [0004], Ubukata (US Pre-Grant Publication 2013/0173554) paragraphs [0004]-[0005], and Slinger (US Patent 6,466,999) 1:14-27, in which patching software is described as common). The remaining determining steps are mental process steps and cannot provide a practical application.
The independent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Receiving data is merely pre-solution data gathering (see MPEP 2106.05(g)). Sending data is regarded as well understood, routine, and conventional (see MPEP 2106.05(d)(II)). The recitation of generic hardware is little more than using a computer to perform an abstract idea, see MPEP 2106.05(f)(2). Playback of content, or displaying content, is insignificant extra-solution activity and is well known (see MPEP 2106.05(g)(3)). Repairing or patching data with a reference file was well understood, routine, and conventional in the art before the earliest filing date of Applicant’s invention (see McCuller (US Pre-Grant Publication 2007/0168708) paragraph [0004], Ubukata (US Pre-Grant Publication 2013/0173554) paragraphs [0004]-[0005], and Slinger (US Patent 6,466,999) 1:14-27, in which patching software is described as common). Thus the claimed invention does not include additional elements that, in part or as a whole, appear to improve the processing of a computer, require the use of a specific machine, or provide a technological solution to a technological problem.
Dependent claims 2-9, 11-17, and 19-22 merely add additional steps that label and define specific data types and data analysis or define additional generic hardware. The claims do not appear to improve the processing of a computer or require the use of a specific machine, and thus do not appear to incorporate the mental process into a practical application. Additionally, none of the dependent claimed elements, in whole or in part, appear to amount to significantly more than the judicial exception.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-10 and 13-22 are rejected under 35 U.S.C. 103 as being unpatentable over Tredoux (US Pre-Grant Publication 2011/0099444) in view of Carson (US Patent 5,978,905).
As to claim 1, Tredoux teaches a method comprising:
receiving, by a computing device, from a user device and based on a request for playback of a previously recorded content item at the user device, metadata associated with the previously recorded content item (see Tredoux paragraph [0042] and Figure 1. An electronic media player is a “user device.” As noted in paragraphs [0044]-[0046], digital content is extracted from memory and stored in the buffer for playback. As the digital content is read from the device, error correction may detect errors in the digital content, see [0046]. As noted in Figure 1 and paragraphs [0048]-[0049], the user device can connect over a network to a “virtual repair unit” and a “media repository.” The “virtual repair unit” is the claimed “computing device.” Paragraph [0054] and Figure 2 indicates that the virtual repair unit may be a separate server. As noted in paragraph [0049], the virtual repair unit may receive a request from a user. Paragraph [0051] indicates that the request includes a “media identifier” and a “segment identifier.” These are both elements of “metadata associated with the previously recorded content item”);
…
determining, based on [an] issue with the portion of the previously recorded content item, a reference segment of the reference content item that corresponds with the portion of the previously recorded content item (see Tredoux paragraphs [0051] and [0058]. A reference content item is identifier); and
sending, by the computing device and to the user device, the reference segment of the reference content item that corresponds to the portion segment of the previously recorded content item (see Tredoux paragraphs [0051] and [0058]. The virtual repair unit (“computing device”) sends to the media player (“user device”) a readable copy of the identified segment from the media repository. Also see paragraphs [0060]-[0061] for a summary).
Tredoux does not explicitly teach:
determining, by the computing device and based on a comparison between the metadata and reference metadata associated with a reference content item associated with the previously recorded content item, an issue with a portion of the previously recorded content item at the user device;
Carson teaches:
determining, by the computing device and based on a comparison between the metadata and reference metadata associated with a reference content item associated with the previously recorded content item, an issue with a portion of the previously recorded content item at the user device (see 5:7-16 and 5:56-63. A source server receives a list of CRC block identifiers from a destination and compares them with a reference copy to determine what data to send to the destination);
It would have been obvious to one of ordinary skill in the art before the earliest filing date of the invention to have modified Tredoux by the teachings of Carson because both references are directed towards synchronizing files that are different. Carson simply provides Tredoux an ability to perform additional error checks for content in a buffer, ensuring that a copy of media contained in the media player of Tredoux is accurate.
As to claim 2, Tredoux as modified by Carson teaches the method of claim 1, wherein the metadata comprises index data associated with the previously recorded content item (see Carson 5:18-45. The system has to determine what portions of data to analyze. The system receives location information indicating where a reference block may be found in a content item. Alternatively, see Tredoux paragraphs [0035] and [0058]), and
wherein the method further comprises determining, based on the index data, the reference segment of the reference content item (see Carson 5:18-45. Alternatively, see Tredoux paragraphs [0035] and [0058]).
As to claim 3, Tredoux as modified by Carson teaches the method of claim 1, wherein the metadata comprises checksum data associated with the previously recorded content item (see Carson 5:17-28) and
wherein determining, based on the comparison between the metadata and the reference metadata associated with the reference content item associated with the previously recorded content item, the portion of the metadata for the previously recorded content item being missing comprises determining, based on a comparison between the checksum data and reference checksum data associated with the reference content item associated with the previously recorded content item, the portion of the checksum data for the previously recorded content item is missing (see Carson 5:56-62, 6:7-13, 10:1-6, 11:35-59. Carson considers and compares checksum data to determine if any metadata is missing).
As to claim 4, Tredoux as modified by Carson teaches the method of claim 2, wherein the index data comprises:
a content identifier identifying the previously recorded content item (see Carson 5:17-45); and
a plurality of indexes, wherein each index of the plurality of indexes indicates an offset from a beginning of the previously recorded content item (see Carson 5:17-45).
As to claim 5, Tredoux as modified by Carson teaches the method of claim 1, further comprising sending, to the user device, at least a portion of the metadata associated with the previously recorded content item (see Carson 6:7-13).
As to claim 6, Tredoux as modified by Carson teaches the method of claim 1, wherein the user device comprises a digital video recorder (see Tredoux paragraph [0044]).
As to claim 7, Tredoux as modified by Carson teaches the method of claim 1, wherein determining, based on the comparison between the metadata and the reference metadata, the portion of the metadata for the previously recorded content item being missing further comprises determining a mismatch between checksum data associated with the previously recorded content item and the reference checksum data associated with the reference content item (see Carson 10:1-6 and 11:35-59).
As to claim 8, Tredoux as modified by Carson teaches the method of claim 1, wherein determining, based on the comparison between the metadata and the reference metadata, the portion of the previously recorded content item being missing comprises determining an absence of at least a portion of checksum data associated with the previously recorded content item as compared to reference checksum data associated with the reference content item (see Carson 10:1-6 and 11:35-59).
As to claim 9, Tredoux as modified by Carson teaches determining, based on the portion of the previously recorded content item being missing, a segment of the previously recorded content item is missing (see Carson 5:56-62, 6:7-13; and
generating a repaired content item by adding the reference segment of the reference content item to the previously recorded content item (see Carson 5:56-62, 6:7-13).
As to claim 10, Tredoux teaches a method comprising:
Receiving, by a user device, a playback request for a previously recorded content item (see Tredoux paragraphs [0042] and [0044]-[0046] and the rejection of claim 1);
Sending, by the user device, to a computing device and based on the playback request for the previously recorded content item, metadata associated with the previously recorded content item (see Tredoux paragraphs [0048]-[0049], [0051], and [0054] and the rejection of claim 1);
receiving, by the user device … , a reference segment of the reference content item corresponding to a segment of a previously recorded content item that is missing (see Tredoux paragraphs [0048]-[0049], [0051], and [0054] and the rejection of claim 1);
generating, by the user device and based on replacing the previously recorded segment of the content item with the received reference segment of the reference content item, a repaired content item (see Tredoux paragraphs [0058] and [0061] for repairing the content item with the segment received from the server); and
causing, by the user device, playback of the repaired content item (see Tredoux paragraph [0061]. The player continues to process (or play) the media after it is repaired).
Tredoux does not explicitly teach:
Receiving, by the user device, and based on an indication that the metadata is missing a portion of metadata as compared to reference metadata for a reference content item associated with the previously recorded content item, a reference segment of the reference content item corresponding to a segment of a previously recorded content item that is missing;
Carson teaches receiving, by the user device, and based on an indication that the metadata is missing a portion of metadata as compared to reference metadata for a reference content item associated with the previously recorded content item, a reference segment of the reference content item corresponding to a segment of a previously recorded content item that is missing (see 3:57-4:9 and 5:56-6:13 and the rejection of claim 1. Carson shows wherein a user’s copy of a file may be missing updates from a source file. This may be identified based on a comparison of metadata);
It would have been obvious to one of ordinary skill in the art before the earliest filing date of the invention to have modified Tredoux by the teachings of Carson because both references are directed towards synchronizing files that are different. Carson simply provides Tredoux an ability to perform additional error checks for content in a buffer, ensuring that a copy of media contained in the media player of Tredoux is accurate.
As to claim 13, Tredoux as modified by Carson teaches the method of claim 10,
Wherein the metadata comprises checksum data and index data (see Carson 5:17-45), the method further comprising:
receiving the reference metadata associated with the reference content item associated with the previously recorded content item (see Carson 5:56-6:13), wherein the reference content item comprises a verified copy of the previously recorded content item (see Carson 4:10-25).
As to claim 14, Tredoux as modified by Carson teaches the method of claim 13, wherein the reference metadata comprises reference index data comprising:
a content identifier identifying the reference content item (see Carson 5:17-45); and
a plurality of indexes, wherein each index of the plurality of indexes indicates an offset from a beginning of the reference content item (see Carson 5:17-45).
As to claim 15, Tredoux as modified by Carson teaches the method of claim 13, wherein the reference metadata comprises reference checksum data comprising:
a content checksum configured to verify data integrity of the reference content item (see Carson 5:17-45 and 10:1-6 and 11:35-59); and
a plurality of index checksums, wherein each index checksum of the plurality of index checksums verifies data integrity of content data beginning at a corresponding one index of a plurality of indexes and ending at a subsequent one index of the plurality of indexes (see Carson 5:17-45 and 10:1-6 and 11:35-59).
As to claim 16, Tredoux as modified by Carson teaches the method of claim 10 wherein generating the repaired content item comprises adding the reference segment of the reference content item to the previously recorded content item (see Tredoux paragraphs [0058] and [0061]. Alternatively, see Carson 6:7-13 and 6:25-42 for also repairing a content item).
As to claim 17, Tredoux as modified by Carson teaches the method of claim 10, wherein generating the repaired content item further comprises inserting another reference segment of the reference content item into the previously recorded content item (see Carson 3:57-4:9).
As to claim 18, Carson teaches a method comprising:
Receiving, by a user device, a playback request for a previously recorded content item (see Tredoux paragraphs [0042] and [0044]-[0046] and the rejection of claim 1);
sending, by the user device to a computing device and based on the playback request, metadata associated with the previously recorded content item (see Tredoux paragraphs [0048]-[0049], [0051], and [0054] and the rejection of claim 1);
receiving, by the user device, from the computing device and based on the metadata, reference metadata associated with a reference content item (see Tredoux paragraphs [0048]-[0049], [0051], and [0054] and the rejection of claim 1); determining, … a portion of the metadata for a segment of the previously recorded content item is missing (see Tredoux paragraphs [0048]-[0049], [0051], and [0054] and the rejection of claim 1);
receiving, by the user device and from the computing device and based on … portion of the metadata for the previously recorded content item being missing, a reference segment of the reference content item corresponding to a segment of the previously recorded content item that is missing (see Tredoux paragraphs [0048]-[0049], [0051], and [0054] and the rejection of claim 1);
generating, by the user device and based on the reference metadata and based on adding the received reference segment of the reference content item, a repaired content item (see Tredoux paragraphs [0058] and [0061] and the rejection of claim 10); and
causing, by the user device, playback of the repaired content item at the user device (see Tredoux paragraphs [0061] and the rejection of claim 10).
Tredoux does not teach:
determining, based on a comparison between the metadata and the reference metadata, a portion of the metadata for a segment of the previously recorded content item is missing;
receiving, by the user device and from the computing device and based on the portion of the metadata for the previously recorded content item being missing, a reference segment of the reference content item corresponding to a segment of the previously recorded content item that is missing
Carson teaches:
determining, based on a comparison between the metadata and the reference metadata, a portion of the metadata for a segment of the previously recorded content item is missing (see 3:57-4:9 and 5:56-6:13 and the rejection of claim 1. Carson shows wherein a user’s copy of a file may be missing updates from a source file. This may be identified based on a comparison of metadata);
receiving, by the user device and from the computing device and based on the portion of the metadata for the previously recorded content item being missing, a reference segment of the reference content item corresponding to a segment of the previously recorded content item that is missing (see 3:57-4:9 and 5:56-6:13 and the rejection of claim 1).
It would have been obvious to one of ordinary skill in the art before the earliest filing date of the invention to have modified Tredoux by the teachings of Carson because both references are directed towards synchronizing files that are different. Carson simply provides Tredoux an ability to perform additional error checks for content in a buffer, ensuring that a copy of media contained in the media player of Tredoux is accurate.
As to claim 19, Tredoux as modified teaches the method of claim 18, wherein the user device comprises a digital video recorder (see Tredoux paragraph [0044]).
As to claim 20, Tredoux as modified by Carson teaches the method of claim 18, wherein the metadata comprises checksum data and index data (see Carson 5:17-45).
As to claim 21, Tredoux as modified by Carson teaches method of claim 20, wherein the index data comprises:
a content identifier identifying the previously recorded content item (see Carson 5:17-45); and
a plurality of indexes, wherein each index of the plurality of indexes indicates an offset from a beginning of previously recorded the content item (see Carson 5:17-45).
As to claim 22, Tredoux as modified by Carson teaches the method of claim 20, wherein the checksum data comprises:
a content checksum for verifying data integrity of the previously recorded content item (see Carson 5:17-45); and
a plurality of index checksums, wherein each index checksum of the plurality of index checksums verifies data integrity of content data (see Carson 5:7-45. Multiple blocks are considered, each with checksums).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Tredoux (US Pre-Grant Publication 2011/0099444) in view of Carson (US Patent 5,978,905) in view of Korotaev et al. (US Pre-Grant Publication 2017/0308420).
As to claim 11, Carson teaches the method of claim 10.
Carson does not explicitly show further comprising:
generating repair metadata associated with the repaired content item; and
determining that at least a portion of the repair metadata matches at least a portion of reference metadata associated with the reference content item.
Korotaev teaches further comprising:
generating repair metadata associated with the repaired content item (see Korotaev paragraph [0052]. The validate and repair process of Figures 5A and 5B has concluded in paragraph [0051]. Paragraph [0052] then states that “this process is repeated for all portions of the backup data file. Thus, any previously repaired portions will be re-verified); and
determining that at least a portion of the repair metadata matches at least a portion of reference metadata associated with the reference content item (see Korotaev paragraphs [0051]-[0052]).
It would have been obvious to one of ordinary skill in the art before the earliest filing date of the invention to have modified Carson by the teachings of Korotaev because both references are directed towards synchronizing files that are different. Korotaev will expand the usage of Carson to include repairing media files that have been damaged as well as synchronizing files. This will increase the utility of Carson for users wishing to repair files.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Tredoux (US Pre-Grant Publication 2011/0099444) in view of Carson (US Patent 5,978,905) in view of Korotaev et al. (US Pre-Grant Publication 2017/0308420), and further in view of Umbehocker et al. (US Pre-Grant Publication 2016/0274967).
As to claim 12, Carson as modified teaches the method of claim 11.
Carson as modified does not explicitly teach:
wherein the reference metadata comprises reference checksum data and reference index data,
wherein the repair metadata comprises repair index data and repair checksum data, and
wherein determining that the at least the portion of the repair metadata matches the at least the portion of the reference metadata comprises determining that the repair index data matches the reference index data.
Umbehocker teaches:
wherein the reference metadata comprises reference checksum data and reference index data (see Umbehocker paragraph [0020]-[0021]. The repair component considers a checksum and knows the location to write the data),
wherein the repair metadata comprises repair index data and repair checksum data (see Umbehocker paragraphs [0020]-[0021]), and
wherein determining that the at least the portion of the repair metadata matches the at least the portion of the reference metadata comprises determining that the repair index data matches the reference index data (see Umbehocker paragraphs [0020]-[0021]).
It would have been obvious to one of ordinary skill in the art before the filing of the invention to have modified Carson by the teachings of Umbehocker because both references are directed towards repairing corrupted file data. Umbehocker merely adds additional metadata that may be used to find and repair broken data items, which will assist the system of Carson with ensuring that data is fixed.
Response to Arguments
Applicant’s arguments filed 16 December 2025 have been fully considered but they are not persuasive.
Response to Arguments made in view of the rejection under 35 USC 103:
Applicant argues that “The cited references do not teach "receiving, by a computing device, from a user device and based on a request for playback of a previously recorded content item at the user device, metadata associated with the previously recorded content item.”
Applicant elaborates, stating that “Tredoux teaches a media player extracting digital media and correcting it prior to storage. Tredoux also teaches using a virtual repair unit to correct the digital media prior to storage. However, Tredoux fails to teach or suggest "receiving, by a computing device, from a user device and based on a request for playback of a previously recorded content item at the user device, metadata associated with the previously recorded content item," as recited in claim 1. Applicant further asserts that Carson fails to make up for this lack of teaching in Tredoux.”
In response to this argument, it is noted that Tredoux shows an electronic media player is a “user device” (see Tredoux paragraph [0042] and Figure 1). As noted in paragraphs [0044]-[0046], digital content is extracted from memory and stored in the buffer for playback. As the digital content is read from the device, error correction may detect errors in the digital content, see paragraph [0046]. As noted in Figure 1 and paragraphs [0048]-[0049], the user device can connect over a network to a “virtual repair unit” and a “media repository.” The “virtual repair unit” is the claimed “computing device.” Paragraph [0054] and Figure 2 indicates that the virtual repair unit may be a separate server. As noted in paragraph [0049], the virtual repair unit may receive a request from a user. Paragraph [0051] indicates that the request includes a “media identifier” and a “segment identifier.” These are both elements of “metadata associated with the previously recorded content item.”
As such, it is clear that Tredoux does teach the claimed limitation to the extent claimed. The media player of Tredoux recognizes that an error exists in a content item. The media player then sends a request to a repair unit comprising metadata, such as an identifier, of the content needing repair. The repair unit receives from the media player the metadata and returns a repair. Thus, Tredoux explicitly shows the claimed limitation to the extent claimed.
Given that Applicant has provided no specific rationale as to how Tredoux does not teach the claimed feature, Applicant’s assertion is unpersuasive.
Applicant is additionally reminded that unclaimed features from the specification receive no patentable weight until claimed.
In regards to claim 10, Applicant argues that “Tredoux teaches a media player extracting digital media and correcting it prior to storage. Tredoux also teaches using a virtual repair unit to correct the digital media prior to storage. However, Tredoux fails to teach or suggest "sending, by the user device, to a computing device and based on the playback request for the previously recorded content item, metadata associated with the previously recorded content item," as recited in claim 1. Applicant further asserts that Carson fails to make up for this lack of teaching in Tredoux.”
As noted above, Applicant provides no specific rationale as to how Tredoux does not teach the claimed limitation. As such, Tredoux does teach the claim limitation as explained in both the rejection and the response to the argument provided for claim 1 above.
Applicant is additionally reminded that unclaimed features from the specification receive no patentable weight until claimed.
Applicant argues that “The Patent Office fails to provide a proper motivation to combine Carson with reference to Tredoux. The Patent Office simply concludes it would have been obvious to one of ordinary skill in the art to modify Tredoux by the teachings of Carson because both references are directed to synchronizing files. Office Action, p. 9. The Patent Office alleges the motivation for such a combination would be "an ability to perform additional error checks for content in a buffer, ensuring that a copy of media contained in the media player of Tredoux is accurate." Id.”
Applicant adds “Applicant submits the Patent Office is creating a problem in the primary reference, Tredoux, in order to solve the problem with the secondary reference, Carson, that did not exist in the primary reference, but for the Patent Office wanting to modify the primary reference with the secondary reference in order to reject the claim. Tredoux teaches a method of error checking the content before it is placed into the buffer of the media player. As such, the content within the buffer is confirmed by Tredoux simultaneous download and error checking to be error-free within the buffer. Thus, Tredoux has no need for error checking the content in the buffer and combining the elements would only provide an unnecessary redundancy to the system of Tredoux. As such, a person of ordinary skill in the art would not be motivated to combine the teachings of Carson with that of Tredoux.”
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Carson simply provides Tredoux an ability to perform additional error checks for content in a buffer, ensuring that a copy of media contained in the media player of Tredoux is accurate. Nothing in either reference prohibits the idea of performing multiple error checking to ensure accuracy of transmission and content.
Response to Arguments made in view of the rejection under 35 USC 101:
Applicants argue that “The pending claims are patent-eligible because they recite a clear improvement to technology or to computer functionality under MPEP § 2106.06(b). The problems addressed by the claims are specifically rooted in computing technology. Applicant then cites portions of paragraphs [0025]-[0028] of the specification, then cites all of claim 1 and summarizes it. Applicant adds “As such, "when viewed as a whole," the claims recite "clear improvements to computer-related technology (e.g., the recording/downloading, repairing, and output of content) [that] do not need the full eligibility analysis" that, for example, enable users to more easily repair previously recorded content with errors at the time of playback of the recorded content, that was not contemplated or considered in the prior art. See MPEP § 2106.06(b) (citing Enfish, 822 F.3d at 1339). For at least these reasons, reversal of the rejection is respectfully requested.”
While Examiner notes a problem in technology is described in the cited portions of the specification, Examiner notes that no improvement to a solution to the problem is described or claimed. For example, the cited context from the specification – in which errors in transmission can cause errors in the recorded content item, wherein portions of the recorded content item are missing – are not claimed in the independent claims. No transmission that results in errors is claimed. While the independent claims at least identify a specific issue – a missing content item - and claims 10 and 18 provide a solution to the issue – repairing the content item – nothing in the specification indicates that the method of “repairing” of a content item is an “improvement to a technological process.” Nothing in the cited portions of the specification appear to show a prior state of the art of repairing content that is improved upon using Applicant’s technique.
Simply disclosing and claiming the problem and a solution at a high level of abstraction (only in claims 10 and 18) is not claiming “an improvement to technology or to computer functionality.”
As noted elsewhere, claim 1 does not perform a repair step and thus does not show Applicant’s claimed solution at all, let alone approach the idea of an improvement to the solution of file repair. Applicant is reminded that unclaimed features from the specification do not receive patentable weight until claimed.
Applicant argues that “The instant claims qualify as patent-eligible subject matter in that they are not directed to a judicial exception, and to the extent that the claims are directed to a judicial exception, the claims each include additional limitations that are significantly more than the exception.”
Applicant elaborates, arguing that “The elements recited in claims would not be performed in the human mind and are, therefore, not mental processes. Applicant asserts that the elements of pending claims cannot be performed in the human mind and to the extent that it could be performed in the human mind, the human mind is not equipped to perform the steps provided.”
Applicant continues, arguing that “For example, the Patent Office does not construe [the claimed language of claims 1, 10, and 18] in a way that indicates it can be performed by "thinking" as required by the MPEP. MPEP § 2106.04(a)(2)(III).”
Applicant continues, arguing that, for each of the independent claims, “the Patent Office has not provided how one could [the text of the respective claim] using only their mind (e.g., "thinking") as required by the MPEP. Id.”
Applicant continues, arguing that, for each of the independent claims, “the Patent Office does not provide why the human mind is equipped to [the text of the respective claim].”
Applicant adds “There is no doubt that the human mind provides unparalleled elasticity. For example, one could envision "building a house" in their own mind, but these types of mental gymnastics are not what the MPEP and courts have sought to prevent through § 101. The MPEP and courts are explicit to that end in that "'[a]t some level, all inventions embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas,' and has cautioned 'to tread carefully in construing this exclusionary principle lest it swallow all of patent law."'
In response to these arguments, which are all directed towards a question of whether the human mind can perform the steps of the claimed invention, it is noted that the mere presence of computing technology or concepts does not render a claim that is otherwise directed towards a mental process patent eligible. As noted in MPEP 2106.04(a)(2) III C, “claims can recite a mental process even if they are claimed as being performed on a computer.
The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of "anonymous loan shopping" recited in a computer system claim is an abstract idea because it could be "performed by humans without a computer").”
MPEP 2106.04(a)(2) III C 1-3 further elaborate on the idea that a claim may still be directed towards an abstract idea despite the use of a generic machine.
Thus, though the claims may not wholly be performed in a human mind, the receiving, determining, and sending steps may be performed by a human with a generic computer. Or, to put another way, in reference to example claim 1, a human being equipped with a generic computer is fully capable of receiving metadata of a content item, comparing the metadata of the content item to a reference content item to determine that a portion of the metadata for the content item is “missing,” and identify “an issue” with a segment of the content item, and sending a reference segment of the reference content item to another computing device. In view of claims 10 and 18, a human being equipped with a generic computer would then be capable of sending metadata associated with a content item, receiving a reference segment of a reference content item based on an indication that the metadata is missing a portion, and replacing and repairing the content item with the reference segment. Human beings, equipped with generic machines, are capable of identifying missing data and replacing the missing data when needed. The steps of the independent claims are logical steps - data retrieval, data analysis, and data output steps. Human beings equipped with generic computers are capable of data retrieval, data analysis, and data output. Thus, independent claims 1, 10, and 18 are directed towards an abstract idea for the reasons provided in the rejection above.
Applicant argues that “For example, the mental processes in the MPEP are those that "... are the equivalent of human mental work, are unpatentable abstract ideas [and] the 'basic tools of scientific and technological work' that are open to all."' Indeed, the MPEP provides examples of such mental processes as they "include observations, evaluations, judgments, and opinions." Id (emphasis added). The Patent Office does not suggest that the claim elements meet any of these categories and Applicant asserts that such is not the case. See generally Office Action.”
As noted above, the claims are directed towards a mental process because the claims contain a series of steps that are performed using generic machines that a human being would be capable of directing. It is noted that the additional elements in the claims do not integrate the mental process into a practical application. The additional elements in the claims also do not appear to be, in part or in whole, significantly more than the abstract idea.
Applicant continues, arguing that, for each independent claim, “The Patent Office has not provided how the human mind could practically perform the elements of [the steps of each respective independent claim].” Applicant adds “and the MPEP requires office actions to provide such information. MPEP § 2106.04(a)(2) (III)(A) ("A claim with limitation(s) that cannot practically be performed in the human mind does not recite a mental process.") (emphasis added). This requirement is based on case law from the Federal Circuit. Indeed, the Federal Circuit has held that it must be proffered how the human mind is equipped to perform the steps provided. SRI Int'l, Inc. v. Cisco Sys., 930 F.3d 1295, 1304 (Fed. Cir. 2019) ("[Defendant submits] that the asserted claims ... encompass steps that people can 'go through in their minds," allegedly confirming that they are directed to an abstract concept . .. . [the Court] disagree[s].. . the human mind is not equipped to detect suspicious activity by using network monitors....") (emphasis added).”
Applicant continues, asserting for each independent claim that “The Patent Office has not provided any basis for how the human mind could [perform each step of each respective independent claim.” Applicant adds “And further, even if the human mind could-by some stretch of the imagination-perform these steps, the Office Action has not provided any basis for why the human mind would perform these steps.”
Applicant elaborates, arguing for each independent claim that “That is, the human mind is not equipped to [perform the steps of each respective independent claim].”
As noted above, the Office Action does not argue that the claims are performed solely in a human mind. Rather, the office action argues that the claimed process is a series of steps that may be performed by a human being equipped with generic machines. The Office Action also argues that the additional elements of the claims do not integrate the mental process into a practical application and do not appear to provide substantially more than the mental process.
Applicant adds “Indeed, the claims at issue here are more akin to the examples in the MPEP that do not recite mental processes. For example, "a claim to a specific data encryption method for computer communication involving a several-step manipulation of data;" and "a claim to a method for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask" do not recite a mental process. MPEP § 2106(III)(A) (emphasis added).”
In response to this argument, it is noted that the presently claimed subject does not contain any limitations directed towards “a specific data encryption method for computer communication involving a several-step manipulation of data” or “a claim to a method for rendering a halftone image of a digital image by comparing, pixel by pixel, the digital image against a blue noise mask.” Applicant is reminded that unclaimed features from the specification carry no patentable weight until claimed.
It is also noted that Applicant has provided no rationale or explanation as to how the present application is similar to either of those examples. As such, Applicant’s argument is unpersuasive.
Applicant argues, in regards to Prong Two of Step 2A, that “As discussed above, the pending claims do not recite a judicial exception and are subject matter eligible on that basis alone. However, even assuming, arguendo, that the pending claims do recite a judicial exception, they integrate such a judicial exception (the alleged abstract idea of a mental process) into a practical application, which is another reason why the pending claims are eligible under § 101.”
Applicant explains, “The pending claims reflect an improvement to technology as an improvement to repairing missing or damaged portions of content items. Improving technology is a consideration that indicates a claim integrates a judicial exception into a practical application and thus imposes a meaningful limit on the judicial exception, without any further analysis. Id. The pending claims recite methods for improving the repair of missing or damaged portions of content items at the time when playback of those content items is requested. Thus, the pending claims provide a specific improvement over prior systems, resulting in improved maintenance of copies of content items that integrates the alleged judicial exception into a practical application. The pending claims also integrate the alleged judicial exception into a practical application based on limiting the conventional practice of correcting missing or damaged portions of content items by reciting specific steps involving determining metadata is missing from the particular content item.”
In response to this argument, Applicant is requested to provide a citation to the specification explaining how the claimed subject matter “[provides] a specific improvement over prior systems.” Applicant is also requested to provide a citation to the specification explaining how the claimed process of repairing content items (which only exists in claims 10 and 18) – which involves simply replacing a segment of a content item with a reference segment - is not conventional. Examiner has shown that the generically recited idea of simply replacing content was well known in the art before the earliest filing date of the invention (see McCuller (US Pre-Grant Publication 2007/0168708) paragraph [0004], Ubukata (US Pre-Grant Publication 2013/0173554) paragraphs [0004]-[0005], and Slinger (US Patent 6,466,999) 1:14-27, in which patching software is described as common). Lacking either of these explanations, Applicant’s argument is unpersuasive.
Applicant adds “SRI International, Inc. v. Cisco Systems, Inc., provides further support for correctly concluding that the pending claims integrate the alleged judicial exception into a practical application. See SRI International, 930 F.3d 1295, 1303 (Fed. Cir. 2019). Claim 1 of SRI International integrates a judicial exception into a practical application by providing "an improvement in computer technology and not directed to an abstract idea." MPEP §2106.04(d)(1). The method claimed by claim 1 of SRI International limits the collection of additional Netflow protocol data to when initially collected data reflects an abnormal condition, which avoids excess traffic volume and hindrance of network performance. The collected data is used to analyze the cause of the abnormal condition, providing the specific improvement over prior systems. See SRI International, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1303 (Fed. Cir. 2019). As such claim 1 of SRI International was found to be directed to a particular improvement in collecting traffic data. The determination of whether a claim provides an improvement to technology is determined without reference to what is well-understood, routine, conventional activity. MPEP §2106.05(d).”
Applicant argues that “The pending claims recite a particular improvement to repairing missing or damaged portions of content items related to the identification of metadata missing in those particular content items. Similar to how claim 1 of SRI International limits the collection of additional Netflow protocol data to when collected data reflects an abnormal condition to analyze the cause of the abnormal condition and improve network monitoring, the pending claims improve methods for repairing missing or damaged portions of content items. Accordingly, the pending claims impose a meaningful limit on the alleged judicial exception and provide a specific improvement over prior systems, resulting in improved correction of missing or damaged portions of content items.”
It is unclear from Applicant’s argument how “an improvement in collecting traffic data” is relevant to the current claim language directed towards identifying “issues” with content items (and, in the case of claims 10 and 18, repairing those issues). As noted above, Applicant is requested to provide a citation to the specification as filed describing the improvement to prior art systems or conventional ways of repairing data. Applicant needs to show that the current invention is an improvement to technology beyond a mere allegation. Simply claiming a generic manner of “repairing” a file does not show an improvement to the technology of repairing a file.
Additionally, it is noted that independent claim 1 isn’t directed towards “repairing missing or damaged portions of content items related to the identification of metadata missing in those particular content items.” The argument is additionally unpersuasive regarding claim 1 because there is no repairing occurring in the claim. If no repairing of content occurs in the claim, even Applicant’s claimed improvement to repairing does not exist.
In regards to step 2B of the 35 USC 101 analysis, Applicant argues that the claimed “receiving…” and “determining” step of claim 1 are additional elements, the claimed “receiving” and “sending” of claim 10 are additional elements, and that the claimed “receiving,” “sending” step of claim 18 are additional elements.
In response to this argument, it is noted that any “determining” step is a mental process step. A human being equipped with a generic computer is capable of conducting data analysis.
The claimed “receiving” and “sending” steps are mere extra-solution activity. As noted in the rejection above, neither the “receiving” nor the “sending” step provides a practical application. Receiving content is merely pre-solution data gathering (see MPEP 2106.05(g)). Sending content does not appear to improve the functioning of a computer or any technology or technical field because they involve the mere transmission of instructions (see MPEP 2106.05(a)).
Additionally, neither the “receiving” nor the “sending” step appears to be, in part or as a whole, significantly more than the abstract idea. Receiving data is merely pre-solution data gathering (see MPEP 2106.05(g)). Sending data is regarded as well understood, routine, and conventional (see MPEP 2106.05(d)(II)).
Applicant continues, stating that “All of these elements have not been shown in the prior art, and the MPEP provides, "[i]f the additional element (or combination of elements) is a specific limitation other than what is well-understood, routine and conventional in the field," the claim is favorable to patent eligibility. Id., para. 2. In addition, the Patent Office has not established that these elements are well-understood, routine or conventional. For example, the MPEP provides that even "[a]n additional element ... that is known in the art can still be unconventional or non-routine." MPEP § 2106.05(d)(I)(1). Indeed, the Office Action must make a factual determination to support that those additional elements are "well-understood, routine, conventional activity." MPEP § 2106.05(d)(I)(2). And, "[e]ven if one or more additional elements are well-understood, routine, conventional activity when considered individually, the combination of additional elements may [still] amount to an inventive concept." MPEP § 2106.05(d)(I)(3).”
Applicant continues, arguing that “The Patent Office has not described why these elements are "well-understood, routine, [or] conventional" at the time the application was filed. Applicant asserts that these elements are not are "well-understood, routine, [or] conventional" and therefore recites elements that are significantly more than the alleged abstract idea of a mental process.”
In response to these arguments, it is initially noted that all of these elements have been shown in the prior art. Additionally, as noted in the rejection above, the “receiving” and “sending” operations are not significantly more than the abstract idea for the reasons provided above and the relevant cited portions of the MPEP.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/CHARLES D ADAMS/Primary Examiner, Art Unit 2152