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 .
DETAILED ACTION
This communication is in response to Applicant’s amendment filed 25 November 2025. Claims 1, 12, 13, 21 and 25 have been amended. Claims 1-28 are currently pending. The rejections are as stated below.
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 1-28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. In particular, claims are directed to a judicial exception (abstract idea) without significantly more.
Claim 1 (exemplary) recites a series of steps for distributing media content within a computer network.
The claim is directed to a process, which is a statutory category of invention.
The claim is then analyzed to determine whether it is directed to a judicial exception. The claim recites the limitations of receiving a request from a user for purchase of a media file, wherein the media file requires purchase according to one of limited play status that allows a finite number of plays of the media file and unlimited play status that allows an unlimited number of plays of the media file, wherein said request includes data identifying a media file stored and status data indicative of either limited play status or unlimited play status when the media file is purchased; updating the account data associated with a user making the request on the basis of the status information included in the request by decrementing the account data by a first amount if a download request includes data indicative of the media file purchased with limited play status and decrementing the account data by a second amount if a download request includes data indicative of the media file purchased with unlimited play status wherein the second amount is greater than the first amount; transmitting data corresponding to the media file identified in the received request, such that complete media files are transmitted and associated with a set number of plays, including limited or unlimited play status, so that the media files are utilized without connecting to the content database to thereby achieve a reduction in data transfer that would otherwise have been required, wherein the data transmitted in response to the request comprises a media file packaged together with embedded play-control metadata, determining whether the media file is permitted to be played based solely on the embedded play-control metadata, the embedded play-control metadata is signed or otherwise protected against tampering, the media file, once transmitted, is stored locally and reused until the permitted number of plays is exhausted, and inhibiting playback by preventing decoding of the media file when the permitted number of uses indicated in the metadata has been exhausted; inhibiting the utilization of the transmitted media file more than a predetermined number of times without updating the account database if the download request includes status data indicative of limited play status; and permitting utilization of the transmitted media file more than a predetermined number of times without updating the account database if the download request includes status data indicative of unlimited play status.
The claimed system simply describes series of steps for distributing media content within a computer network. These limitations, as drafted, are processes that, under its broadest reasonable interpretation, covers performances and concepts relating to fundamental economic principles or practices/commercial interactions that enhance customer experience with purchasing media content, and, therefore, fall within the certain methods of organizing human activity category of the USPTO’s Guidance. See 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14. In this case, the fundamental economic principle or practice is the common practice of receiving a request from a user for purchase of a media file and decrementing the account data by a first amount if a download request includes data indicative of the media file purchased with limited play status and decrementing the account data by a second amount if a download request includes data indicative of the media file purchased with unlimited play status. These limitations are directed to an abstract idea because they fall within the enumerated group of “certain methods of organizing human activity” in the 2019 PEG.
Next, the claim is analyzed to determine if it is integrated into a practical application. The recited judicial exception may be integrated into a practical application by identifying whether there are any additional elements recited in the claim beyond the judicial exception and evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. The claim recites additional limitation of a computer network that includes a communications system; an account database associating users with account data; a content database storing a plurality of media files; a user terminal, a compliant playback module on the user terminal, communication with the server, metadata cryptographically signed to perform the steps. The processor and terminal in the steps are recited at a high level of generality, i.e., as a generic processor performing a generic computer function of processing data. This generic processor limitation is no more than mere instructions to apply the exception using generic computer component. Merely adding generic computer components to perform abstract ideas does not integrate those ideas into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 55 (identifying “merely includ[ing] instructions to implement an abstract idea on a computer” as an example of when an abstract idea has not been integrated into a practical application). Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea.
Next, the claim is analyzed to determine if there are additional claim limitations that individually, or as an ordered combination, ensure that the claim amounts to significantly more than the abstract ideas (whether claim provides inventive concept). As discussed above, the recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer (using the computer as a tool to implement the abstract idea). Taking the additional elements individually and in combination, the computer at each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The same analysis applies here, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at or provide an inventive concept. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. When viewed either individually, or as an ordered combination, the additional limitations do not amount to significantly more than the abstract idea itself. Therefore, the claim does not amount to significantly more than the recited abstract idea. Therefore, the claim is not patent eligible.
The analysis above applies to the statutory category of invention of claims 1, 12, 13, 21 and 25. Furthermore, the dependent claims 2-11, 14-20, 22-24 and 26-28 do not resolve the issues raised in the independent claims.
The dependent claims do not add limitations that meaningfully limit the abstract idea. Dependent claims 2-11, 14-20, 22-24 and 26-28, recite additional limitations and steps. However, as mentioned above with respect to the independent claims, the claimed limitations are no more than mere instructions to apply the exception using generic computer component. Also, these limitations are an attempt to limit the abstract idea to a particular technological environment. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to the abstract idea.
These claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply steps performed by a generic computer. The claim merely amounts to the application or instructions to apply the abstract idea on a device, and is considered to amount to nothing more than requiring a generic device to merely carry out the abstract idea itself.
The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as integrating the abstract idea into a practical application or amounts to significantly more than the abstract idea itself.
Accordingly, claims 1-28 are rejected as ineligible for patenting under 35 U.S.C. 101 based upon the same analysis.
Response to Arguments
Applicant's arguments with respect to 35 USC § 101 directed to non-statutory subject matter have been fully considered but they are not persuasive.
Examiner respectfully disagrees. Claims 1-28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
The proposed amendments do not overcome the 35 U.S.C. 101 rejection. Applicant amended the claims to include the above underlined claim limitations. The same updated analysis based on the new 2019 Patent Eligibility Guidance (2019 PEG) applies to the newly added claimed limitations of amended claims 1, 12, 13, 21 and 25 as discussed above and in the previous office action rejections.
The claims apply the abstract idea on the computer system at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The claims are directed to an abstract idea.
Applicant argues in substance that the claims integrate the abstract idea into a practical application and would amount to significantly more. “For example, the claims now expressly require that downloaded media files comprise embedded play-control metadata that is cryptographically protected and interpreted locally by a compliant playback module. The playback module determines permitted usage without additional communication with the server, thereby enabling secure offline playback, reducing server load, and reducing overall network bandwidth … The amended claims define a non-generic, computer-specific architecture that improves digital rights management, reduces bandwidth, and enables uninterrupted operation in low-connectivity environments…”
Examiner respectfully disagrees, the claims here are not directed to a specific improvement to computer functionality nor an inventive solution to any computer specific problem/internet-centric problem. Limiting the use of an abstract idea “‘to a particular technological environment’ does not confer patent eligibility as this cannot be considered an improvement to computer or technology and so cannot be “significantly more.”
The focus of the claims in the present case is not on an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. The claims here are not directed to a specific improvement to computer functionality. Rather, they are directed to the use of generic technology in a well-known environment, without any claim that the invention reflects an inventive solution to any computer specific problem. Even the “metadata cryptographically signed” and “storing locally” are standard and well understood, routine and conventional.
The technology implemented in the instant application is useful to solve a business problem, but the additional elements are not a technological solution to a technological problem, or a solution to the problem introduced by the technology itself. Rather, the additional elements simply limit the abstract ideas to a particular technological environment. Although the claims include the phrase "reduction in data transfer that would otherwise be required" and “reducing network traffic” which is indicative of an improvement to the functioning of a computer, the data- reduction in data transfer is (according to the claims) a consequence of the "utilization of the media files without connecting to the content database", there is no "reduction in data transfer that would otherwise be required" computer-functioning improvement unless the media files are utilized "without connecting to the content database."
The courts found that “… if a patent’s recitation of a computer amounts to a mere instruction to ‘implement[t]’ an abstract idea ‘on . . . a computer,’ that addition cannot impart patent eligibility.” Alice Corp., 134 S.Ct. at 2358. The claimed invention does not indicate that specialized computer hardware is necessary to implement the claimed systems, similar to the claims at issue in Alice Corp. See Alice Corp., 134 S.Ct. at 2360 (determining that the hardware recited in the claims was “purely functional and generic,” and did not “offer [] a meaningful limitation beyond generally linking the use of the [method] to a particular technological environment, that is, implementation via computers”).
A claim may be found to be eligible if it integrates a judicial exception into a practical application as cited by Applicant. However, examiner notes that "claiming the improved efficiency inherent with applying the abstract idea on a computer" does not provide an inventive concept (see MPEP §2106.05(f)(2).) Claiming improved data processing efficiency inherent with applying any improvement to the judicial exception itself on a computer does not provide an inventive concept. The claims do not integrate the judicial exception into a practical application.
Under the 2019 PEG, Step 2A, prong two, integration into a practical application requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or 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 exception. Limitations that are not indicative of integration into a practical application are those that are mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. -see MPEP 2106.05(f). The instant claims do not attempt to solve an unconventional technological solution. Using the processor as a tool to implement the abstract idea and the way the information is processed and displayed does not make it less abstract. The claimed use of computer elements recited at a high level of generality is an attempt to limit the abstract idea to a particular technological environment. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claims as a whole do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are generic computer components claimed to perform their basic functions. The processor is a general-purpose processor that performs general-purpose functions. The recitation of the claimed limitations amounts to mere instructions to implement the abstract idea on a computer (using the processor as a tool to implement the abstract idea). Taking the additional elements individually and in combination, each step of the process performs purely generic computer functions. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claim does not amount to significantly more than the abstract idea itself. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply a generic recitation of a computer processor performing its generic computer functions. Accordingly, claims are ineligible.
Dependent claims do not resolve the issues raised in the independent claims. The dependent claims do not add limitations that meaningfully limit the abstract idea.
The dependent claims do not impart patent eligibility to the abstract idea of the independent claims. The claims merely amount to the application or instructions to apply the abstract idea on a processor, and is considered to amount to nothing more than requiring a generic processor to merely carry out the abstract idea itself. Therefore, none of the dependent claims alone or as an ordered combination add limitations that qualify as significantly more than the abstract idea.
Accordingly, claims 1-28 are rejected as ineligible for patenting under 35 U.S.C. 101.
For these reasons the rejection under 35 USC § 101 directed to non-statutory subject matter set forth in this office action is maintained.
Conclusion
Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hani Kazimi whose telephone number is (571) 272-6745. The examiner can normally be reached Monday-Friday from 8:30 AM to 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas can be reached on (571) 270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Respectfully Submitted
/HANI M KAZIMI/
Primary Examiner, Art Unit 3691