NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE THOMAS C. CHUANG,

Appellant

______________________ 

2014-1257

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 12/488,562.

______________________ 

Decided: February 10, 2015

______________________ 

 THOMAS C. CHUANG, Chuang Intellectual Property 

Law, San Francisco, California, pro se.

 NATHAN K. KELLEY, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, for 

appellee. Also represented by FARHEENA YASMEEN

RASHEED, AMY J. NELSON. 

______________________ 

Before REYNA, MAYER, and CHEN, Circuit Judges.

PER CURIAM. 

The Patent Trial and Appeal Board (Board) affirmed 

the examiner’s rejections of claims 1–3 and 5–20 from 

Thomas Chuang’s patent application as obvious over a 
2 IN RE CHUANG

combination of three references. For the reasons discussed below, we affirm.

BACKGROUND

Mr. Chuang filed his application on June 21, 2009 under the Patent Office’s Accelerated Examination program.1 Following a final action issued by the Patent 

Office, Mr. Chuang appealed to the Board (then called the 

Board of Patent Appeals and Interferences). In response, 

the examiner reopened prosecution, but rejected all 

pending claims under 35 U.S.C. § 103, and rejected certain claims as non-statutory subject matter under 35 

U.S.C. § 101. Mr. Chuang again appealed to the Board, 

which then issued a decision affirming the examiner’s 

rejections under 35 U.S.C. § 103, and, without the benefit 

of later-decided Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 

2347, 2358 (2014), the Board reversed the examiner’s 

rejections under 35 U.S.C. § 101. This appeal followed. 

We confine our review to the Section 103 issue. We have 

jurisdiction under 28 U.S.C. § 1295(a)(4). 

DISCUSSION

We review the Board’s factual findings for substantial 

evidence and its legal conclusions de novo. In re Kotzab, 

217 F.3d 1365, 1369 (Fed. Cir. 2000). Obviousness is a 

question of law based on underlying facts. Graham v. 

John Deere Co., 383 U.S. 1, 17 (1966). 

1 As a condition of entry into the Accelerated Examination Program, Mr. Chuang agreed not to separately 

argue the patentability of any dependent claims in any 

subsequent appeal. See Manual of Patent Examining 

Procedure (MPEP) § 708.02(a)(I), 9th ed., rev. 9 (Mar. 

2014). Mr. Chuang’s appeal of the rejections is thus 

focused on representative claims 1, 7, and 13, which are 

the independent claims.

 
IN RE CHUANG 3

REJECTION OF CLAIM 1 

Independent claim 1 recites a computer implemented 

method for managing rented downloaded content:

A computer implemented method for managing 

rented downloaded content comprising:

[a] presenting a user with a content descriptor associated with a downloadable content downloadable to the user available to rent at a rental 

price and purchase at an initial purchase price;

[b] receiving a user rental request to rent the 

downloadable content at the rental price;

[c] initiating downloading of the downloadable 

content to the user at a user computer responsive 

to receiving the user rental request, the downloadable content including a use limitation comprising an expiration date;

[d] generating a user data structure comprising:

[i] one or more content descriptors associated with previously downloaded content 

rented by the user; and

[ii] a status identifier for each content descriptor, the status identifier comprising 

the expiration date;

[e] maintaining a database of user data structures 

corresponding to a plurality of users;

[f] generating a previously downloaded content 

purchase price for a content descriptor associated 

with a previously downloaded content rented by 

the user;

[g] providing the previously downloaded content 

purchase price to the user;
4 IN RE CHUANG

[h] receiving a user purchase request to purchase 

the previously downloaded content rented by the 

user and residing on the user computer; and

[i] transmitting an update of the use limitation 

following receipt of the user purchase request, the 

update comprising a file update eliminating the 

expiration date included in the downloadable content.

Application, claim 1 (annotated).

The examiner rejected claim 1 and dependent claims 

2–3 and 5–6 as obvious over the combination of three 

references: U.S. Patent publication no. 2004/0068451 

(Lenk), U.S. Patent no. 7,403,910 (Hastings), and U.S. 

Patent publication no. 2002/0032905 (Sherr).2 

Lenk discloses an online system and method for renting and purchasing electronic media, for example video 

games, wherein the media is mailed to the customer in 

physical discs. Lenk, abstract. Figure 31 illustrates an 

exemplary webpage, which displays a game product 

description page including selection buttons for “Rent it 

(36R),” and “Buy it (36b).” Any user can click on the “Buy 

it” button and purchase any game listed on the website 

for a corresponding “Buy it” price. Id. at ¶¶ 81–82. In 

addition, Lenk discloses a monthly subscription rental 

model whereby a user is charged a monthly subscription 

fee. Id. at ¶ 73. Subscribing members are permitted to 

take out a predetermined number of discs at any given 

time (e.g., no more than two games out at a time). Id. If a 

member clicks on “Rent it” button when viewing a game, 

2 While not necessary to reject the claims, the 

examiner also cited a fourth reference (Ptasznik). Because the claims are properly rejected under the combination of Lenk, Hastings, and Sherr, we find it unnecessary 

to address Ptasznik. 

 
IN RE CHUANG 5

that game is added to the member’s rental queue and 

subsequently delivered to that member. Id. at ¶¶ 80–81. 

Under “Games You Have Out,” members have the option, 

at any time while a game is in their possession, to click 

the “Keep it” button and keep the game for a purchase 

price set by the service. Id. at ¶ 106. 

Hastings likewise discloses a system for renting digital audio and video products to customers using a subscription payment model. Hastings, col. 9, ll. 1–25. 

Similar to Lenk, Hastings teaches that customers can 

select movies, music, and videogames and prioritize them 

in a desired order within a rental queue. Id. at col. 8, ll.

8–19. Hastings further discloses that the rental user can 

choose electronic delivery of the content by download over 

the Internet, or by shipment of physical media in the 

mail. Id. at col. 26, ll. 5–12. The download process is 

mediated by “a software feature or tool to manage the 

electronic transfer and relinquishment of the content 

product” with encryption provisions for “removal, change, 

or expiry of keys that unlock or enable the content to be 

used.” Id. at col. 26, ll. 15–17, col. 25, ll. 50–60. In the 

rental context, the tool may have the ability to delete 

content when the rental period for that content has expired. Id. at col. 26, ll. 35–39. 

The third reference Sherr also discloses a rental system for video rental services. Sherr, ¶ 9. Unlike Lenk 

and Hastings, Sherr discloses a pay-as-you-go model that 

allows users to download movie files onto their computers 

using the Internet. Id. Users send requests to rent

digital video from an online catalog and upon payment, 

are able to download the video. Id. Once a video is 

transmitted, it is viewable by a user for a specified period 

of time using an encryption key. Id. at ¶¶ 88, 119, 122. 

The encryption key is disabled once the specified period of 

time expires and prohibits further replaying of the video. 

Id. at ¶¶ 121–22. 
6 IN RE CHUANG

All three references disclose online video or video 

game rental services and, as the examiner found, describe 

business strategies that were old and well known in the 

art. In particular, the examiner noted that a skilled 

artisan would have recognized that the concepts of renting media with the additional option of buying it, whether 

by mail, downloaded over the Internet, per title, or by a 

monthly subscription fee, were all old and well known. 

Individual features from each reference could thus be 

combined according to known methods to yield predictable 

results. For example, the examiner found that one of 

ordinary skill in the art would have “looked upon Hastings and recognized that downloading media to be played 

on an electronic system is old and well known and would 

have been an obvious feature to be included with the 

system and method of Lenk,” which discloses delivery of 

rented media by mail. Examiner’s Answer dated Apr. 6, 

2011 (Answer), 12. Combining Lenk and Hastings would 

predictably provide “a more versatile media” as well as 

“providing a more streamlined process of allowing user’s 

[sic] to purchase media that they already have in their 

possession.” Id. at 12-13. The examiner likewise found it 

would have been obvious to combine aspects of Sherr even 

though Sherr discloses a different payment model, because that model was simply “an alternate business 

strategy that is old and well known in the art.” Id. at 28. 

Ultimately, the nature of the problem to be solved—

renting media to users—as well as the need to do so in an 

efficient and user-friendly way, would have led one of 

ordinary skill in the art to choose appropriate features 

from each reference to arrive at the claimed invention. 

In particular, the examiner found that Lenk teaches 

most of the limitations of claim 1, including presenting 

the content for rent or purchase, receiving a rental request for the content, delivering the content, providing 

the user a purchase price for the previously rented content in the user’s possession, receiving a purchase request 
IN RE CHUANG 7

for the content, and updating the database to reflect the 

sale. The examiner also found that the claimed “rental 

price,” under its broadest reasonable interpretation, 

encompasses the monthly rental scheme disclosed in 

Lenk. The examiner acknowledged that the combination 

of Lenk and Hastings fails to disclose a use limitation and 

a status identifier, the limitation and identifier each 

comprising an expiration date. However, Sherr disclosed 

those limitations by teaching media that is encrypted and 

unlocked using an encryption key that expires once a 

specified period of time passes.

The Board reviewed, agreed with, and affirmed the 

examiner’s obviousness rejections. Accordingly, the Board 

rejected Mr. Chuang’s argument that the claimed “rental 

price” is not met by Lenk’s subscription plan model. The 

Board agreed with the examiner that the term encompasses monthly rental schemes, finding that “each rental 

media in the Lenk system has an associated price, which 

is the monthly subscription fee.” The Board also rejected 

Mr. Chuang’s argument that Lenk teaches away from the 

use of an expiration date because there are no “due dates” 

in the monthly subscription plan. The Board found that 

while Lenk teaches an alternative design, Mr. Chuang 

failed to show that Lenk criticizes, discredits, or otherwise 

discourages the claimed solution.

Mr. Chuang advances here essentially the same arguments he raised on appeal to the Board. First, he 

contends that the Board erred in affirming the examiner’s 

determination that Lenk discloses the claimed “rental 

price” of clause [a]. Specifically, Mr. Chuang contends 

that the Board failed to construe the term or in the alternative, incorrectly construed the term. 

We find that the Board, in adopting the examiner’s 

analysis, addressed the construction of the term adequately enough to permit judicial review. See, e.g., In re 

Hyatt, 211 F.3d 1367, 1371 (Fed. Cir. 2000). With respect 
8 IN RE CHUANG

to “rental price,” the examiner found that the prior art 

does “have an associated rental fee for renting media 

online[.]” Answer at 27. This statement implicitly construes the “rental price” limitation, under its broadest 

reasonable interpretation, to mean “an associated rental 

fee for renting media online.” 

Here, Mr. Chuang has not provided a persuasive reason, e.g., disclaimer or lexicography, for us to depart from 

the examiner’s construction (adopted by the Board). We 

also note that his proposed construction is inconsistent 

with other parts of the specification, which discloses a 

DVD rental embodiment where users pay a monthly fee 

which allows the user to rent as many DVDs as desired. 

Under the agency’s reasonable construction, there is no 

dispute that Lenk’s monthly fee for renting media discloses the “rental price” as claimed.3 

Next, Mr. Chuang contends that Lenk is not properly 

combined with Sherr to teach the term “expiration date” 

in limitations [c] and [d] of claim 1. Mr. Chuang does not 

dispute that Sherr discloses this limitation. However, he 

contends that Lenk’s disclosure of a monthly subscription 

system teaches away from use of expiration dates as 

claimed in his invention. Specifically, because Lenk 

teaches that members can rent their games for any length 

of time and emphasizes the absence of due dates as a 

benefit of its subscription model, it teaches away using 

expiration dates. 

3 Moreover, it is undisputed that the prior art discloses the claimed “rental price” even under Mr. Chuang’s 

narrow conception of the term. As the examiner found, 

Sherr discloses the old and well-known method of allowing users to rent a particular movie for a predetermined 

time period for a specified payment. Answer at 13; Sherr, 

Fig. 9; id. at ¶ 9. 

 
IN RE CHUANG 9

We disagree. There is substantial evidence to support 

the Board’s finding that Lenk does not teach away from 

the claimed invention. The fact that the two references 

teach different payment models for how to rent videos 

does not mean that a person of ordinary skill in the art 

would have been discouraged from combining different 

features from the two disclosures, including the wellknown aspect of using expiration dates on rental media. 

“[I]t is not necessary that the inventions of the references 

be physically combinable to render obvious the invention 

under review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. 

Cir. 1983); see also In re Fulton, 391 F.3d 1195, 1201 (Fed. 

Cir. 2004) (“The prior art’s mere disclosure of more than 

one alternative does not constitute a teaching away from 

any of these alternatives because such disclosure does not 

criticize, discredit, or otherwise discourage the [claimed] 

solution . . . .”). Rather, the relevant inquiry is “what the 

combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 

F.2d 413, 425 (C.C.P.A. 1981). 

In adopting the examiner’s rejections, the Board reasonably found that both references are directed to the 

same field of endeavor—distribution and rental of media. 

It was further reasonable for the Board to find that using 

an expiration date with the downloaded rented media of 

Lenk (as modified in view of Hastings) was no more than 

a combination of familiar elements in a known way to 

yield predictable results. As the references teach old and 

well-known concepts for renting media, taking a wellestablished feature of one and incorporating it into the 

other would have been obvious. See, e.g., Lenk, ¶ 69 

(generally stating that its invention may be “applied to 

rental and sales of electronic entertainment items.”)] Mr. 

Chuang is unable to point to any passage in Lenk that 

criticizes or otherwise discourages the use of expiration 

dates in a rental system using a subscription payment 

model. Indeed, the examiner found that Hastings, which 
10 IN RE CHUANG

like Lenk teaches a subscription model, teaches deleting 

downloaded media after the rental time has expired. 

We thus find that the Board did not err in upholding 

the examiner’s rejection of claim 1.

REJECTION OF CLAIM 7 

Mr. Chuang relies on the same arguments presented 

for claim 1 in appealing the rejection of claim 7. We reject 

these arguments for the same reasons as set forth for 

claim 1 and find that the Board did not err in upholding 

the rejection of claim 7. 

REJECTION OF CLAIM 13

Claim 13 is similar to claim 1 and, relevant here, requires a step of providing to the user a user data structure comprising, inter alia, “a rent again selector for each 

content descriptor . . . , the rent again selector associated 

with a previously downloaded content rent again price

. . . .” Mr. Chuang contends that the Board erred in 

finding that a “rent again selector” and a “rent again 

price” would have been obvious over the prior art. He 

does not dispute that the examiner properly found these 

limitations are disclosed in Sherr. Rather, he again 

argues that the teachings of Lenk and Sherr are incompatible because their respective media rental schemes are 

incongruous. 

We disagree and find the Board provided substantial 

evidence of motivation for one of ordinary skill to combine 

the teachings in the references to enable re-renting of 

media. Through adopting the examiner’s Answer, the 

Board reasonably found that one of ordinary skill in the 

art looking at Lenk’s “Keep it” button would have understood there was a motivation to provide shortcuts to allow 

users to obtain items as quickly as possible. The same 

motivation would have led one of ordinary skill in the art 

to combine the attributes of Lenk with Sherr’s teaching of 

re-renting media, with a “rent again” button “to provide 
IN RE CHUANG 11

shortcuts to [allow users to] obtain an item as quickly as 

possible . . . since it allows for better customer satisfaction/service.” Answer at 32–33. See In re Keller, 642 F.2d 

at 425. And as the examiner reasonably found, doing so 

would have been a combination of familiar elements in a 

known way to yield predictable results.

Mr. Chuang also contends that the prior art does not 

disclose claim 13’s requirement of the step of receiving a 

user request to re-rent previously rented content that is 

“residing on the user computer.” Contrary to Mr. 

Chuang’s arguments, as the Board and examiner found, 

Sherr teaches that users can pay for unlock codes to “rerent the downloaded media.” See Answer at 29 (citing 

Sherr, ¶¶ 88, 119, 122). Finally, Mr. Chuang relies on the 

same arguments he presented for claim 1 as additional 

grounds for appealing the rejection of claim 13. We reject 

these arguments for the same reasons as set forth for 

claim 1, supra. 

We thus find the Board did not err in upholding the 

examiner’s rejection of claim 13. 

CONCLUSION

For the foregoing reasons, we conclude that the Board 

properly affirmed the examiner’s rejection of representative claims 1, 7, and 13 as obvious over Lenk, Hastings, 

and Sherr. We have considered Mr. Chuang’s remaining 

arguments and find them without merit. We thus affirm

the rejections of claims 1–3 and 5–20. 

AFFIRMED