Ex Parte 5,475,585 et alDownload PDFPatent Trial and Appeal BoardDec 26, 201390011791 (P.T.A.B. Dec. 26, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 90/011,791 07/18/2011 5,475,585 R3111607 1039 40401 7590 12/26/2013 Hershkovitz & Associates, PLLC 2845 Duke Street Alexandria, VA 22314 EXAMINER KE, PENG ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 12/26/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Olympic Developments AG, LLC Patent Owner and Appellant ____________ Appeal 2013-010936 Reexamination Control 90/011,791 Patent US 5,475,585 Technology Center 3900 ____________ Before HUBERT C. LORIN, RICHARD M. LEBOVITZ, and BRETT C. MARTIN, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL Patent Owner, Olympic Developments AG, LLC, appeals from the Patent Examiner’s rejections of claims 1-3, 5-9, 21-23, and 28-30 in the above-identified ex parte reexamination of US 5,475,585. The Board’s jurisdiction for this appeal is under 35 U.S.C. §§ 6(b), 134(b), and 306. We affirm-in-part. Appeal 2013-010936 Reexamination Control 90/011,791 Patent 5,475,585 2 I. STATEMENT OF CASE This appeal involves US 5,475,585 (“the ‘585 patent”) which issued December 12, 1995. Under 35 U.S.C. §§ 301-307 and 37 C.F.R. § 1.510, a Request for Ex Parte Reexamination of the ‘585 patent was submitted on behalf of third-party requester, Sony Computer Entertainment America LLC and Sony Electronics Inc. (collectively “Requester”), on July 11, 2011. The real party in interest in this ex parte reexamination proceeding is the Patent Owner, Olympic Developments AG, LLC (Appeal Br. 1, dated December 3, 2012). Patent Owner states that the ‘585 patent is the subject of litigation proceedings in various district courts (Appeal Br. 3). The proceedings were stayed, but we have not been informed of their current status. The claimed subject matter pertains to a “transactional processing system for purchasing products and services from a plurality of available products and services and processing corresponding financial transactions in real-time” and corresponding methods. (Claim 1.) The claims comprise a programming transmitter, receivers, and a transaction processor. The transmitter broadcasts menus to a receiver (‘585 patent, col. 1, l. 56 to col. 2, l. 2). The purchaser uses the menu(s) to select and purchase a product or service (id. at col. 1, ll. 56-67). The receiver is linked to a transaction processor which verifies the purchaser’s financial data, and authorizes the transaction in real-time, enabling the retailer to send the ordered product or service to the purchaser (id. at col. 2, ll. 1-20). Appeal 2013-010936 Reexamination Control 90/011,791 Patent 5,475,585 3 II. REJECTIONS Claims 1-3, 5-9, 21-23, and 28-30 stand rejected by the Examiner as follows: 1. Claims 1-3, 5, 6, 9, 21-23, and 28-301 as obvious under 35 U.S.C. § 103(a) over Bush ‘8632 and Paschke3 (Answer 3). 2. Claims 7, 8, and 28-30 as obvious under 35 U.S.C. § 103(a) over Bush ‘863, Paschke, and Bushnell4 (Answer 5). 3. Claims 1, 5 and 21-23 as obvious under 35 U.S.C. § 103(a) over Bush ‘863 and Young5 (Answer 8). III. CLAIMS Claims 1 and 7 are representative and are reproduced below along with intervening claims 2 and 6: 1. A transactional processing system for purchasing products and services from a plurality of available products and services and processing corresponding financial transactions in real-time comprising: (a) a programming transmitter means for broadcasting and updating a plurality of transaction information sets associated with said plurality of 1 Claims 28-30 were not included in the statement of this rejection in the Final Rejection (pages 2-3) dated February 23, 2012. However, in responding to the Final Rejection on March 30, 2012, Patent Owner included them in the statement of the rejection (page 4). This was an error since claims 28-30 were not rejected over this combination of publications in the Final Rejection. The Examiner’s inclusion of them in the statement of this rejection in the Answer therefore appears to be an inadvertent error. We therefore do not address claims 28-30 them in this rejection. 2 Bush, US 4,789,863 (“Bush ‘863”), issued Dec. 6, 1988. 3 Paschke, Robert A., EP 0344672 A1, filed Dec. 6, 1989. 4 Bushnell et al. (“Bushnell”), US 4,071,697, issued Jan. 31, 1978. 5 Young et al. (“Young”), US 5,479,268, issued Dec. 26, 1995. Appeal 2013-010936 Reexamination Control 90/011,791 Patent 5,475,585 4 available products and services via a first communication channel, said first communication channel having a plurality of subchannels, said subchannels each transmitting channel having a plurality of subchannels, said subchannels each transmitting a corresponding transaction information set in said first communication channel; (b) a plurality of receiver means each serving one user for receiving in each receiver means the identical transaction information sets broadcast from said programming transmitter, each one of said receiver means including RAM storage means, and means for downloading and[ ]storing within the RAM storage means a desired transaction information set from the broadcast information sets received within each of said receiver means and to select a desired transaction for purchasing a product and service associated with said selected transaction information set, each of said receiver means including means for transmitting financial information of the user; each of said receiver means including a processor, programmed instructions and stored information for acting on downloaded information, and means for generating signals to said processor for modifying the downloaded information based on the programmed instructions, stored information and the downloaded information; (c) means forming a second communication channel originating at said plurality of receiver means and through which the financial information of respective users which is processed at said receiver means is transmitted; and (d) transaction processor means coupled to said second communication channel for receiving the financial information of respective users generated at respective receiver means, said transaction processor including means for generating an authorization signal through said second communication channel to respective receiver means to authorize said desired transaction in real time for said selected products and services. 2. A system according to claim 1, wherein each one of said transaction information sets further comprise a plurality of prompting data corresponding to said products and services for prompting users to make a selection. 6. A system according to claim 2, wherein said transaction processor before authorizing said desired transaction, verifies said financial information of said user and transmits an authorizing signal to a financial Appeal 2013-010936 Reexamination Control 90/011,791 Patent 5,475,585 5 institution, said financial institution making payments to vendors or service providers. 7. A system according to claim 6, wherein said transaction processor further transmits transaction information to said vendors or service providers, allowing said vendors or service providers supply selected products or services. IV. OBVIOUSNESS IN VIEW OF BUSH ‘863 AND PASCHKE Based on the Requester’s proposed rejection in the initial Request for Reexamination, the Examiner found that the claims are obviousness in view of Bush ‘863 and Paschke (Answer 3). Patent Owner contends that the cited prior art combination does not describe the limitation of claim 1 of “each of said receiver means including a processor, programmed instructions and stored information for acting on downloaded information, and means for generating signals to said processor for modifying the downloaded information based on the programmed instructions, stored information and the downloaded information.” Support for disputed claim limitation Patent Owner identified support in the ‘585 patent for the disputed limitation. This support was said by Patent Owner to have also been cited during the prosecution of the underlying application which led to the ‘585 patent (Appeal Br. 7). The support in the ‘585 patent for the limitations, as indicated by Patent Owner, is as follows: 1) the “downloaded information” corresponding to “[e]ncoded indexing data,” where the indexing data is described in the ‘585 patent as “presented to microprocessor 201, in demodulated packets of data, that Appeal 2013-010936 Reexamination Control 90/011,791 Patent 5,475,585 6 would be used as cues for the various types of menuing data, under program control, so that appropriate menus and text would be placed in the correct memory in the desired sequence and location.” (‘585 patent, col. 6, ll. 4-9; Appeal Br. 7.) 2) “programmed instructions” corresponding to the main program instructions for operating the receiver 26 (‘585 patent, col. 6, ll. 10-12; Appeal Br. 7). 3) “stored information” corresponding to “Menu text RAM 205, [which] is a paged RAM for storing individual pages of display text memory [and] which can then be accessed, a page at a time and dumped out into the video character generator 206 which would probably have a single page of RAM” (‘585 patent, col. 6, ll. 19-24; Appeal Br. 7). Discussion In setting forth the basis of the proposed rejection, Requester relied upon Patent Owner’s representations that the disclosure in the ‘585 patent of “indexing data” corresponded to the claimed “downloaded information.” Based on this representation, Requester cited Paschke’s description of “Memory index pointers” at column 7, 38-39, as meeting the disputed claim limitation (Request for Reexamination 7 and 37-38). Patent Owner contends that it is not relevant that Paschke teaches a feature disclosed in the ‘585 patent because the feature is not claimed (Appeal Br. 8-9). We disagree. Claims are interpreted based on the written description of a patent. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Because Patent Owner represented that “downloaded Appeal 2013-010936 Reexamination Control 90/011,791 Patent 5,475,585 7 information” is indexing data, it was reasonable for Requester to read the claim as covering “indexing data” and to find the limitation taught in the prior art when Paschke describes “Memory index pointers.” Patent Owner did not provide sufficient evidence in the Appeal Brief, or during the reexamination proceeding, that Paschke’s description of memory index pointers does not meet the claimed limitation “downloaded information.” Patent Owner also contends that Requester did not provide “a single citation from Paschke to support” the allegation that Paschke disclosed “programmed instructions.” (Appeal Br. 9.) In the Request for Reexamination, Requester wrote: In particular, Paschke discloses that each receiver means (e.g., location unit) includes a processor (Ex. C, Paschke at FIG. 3, item 82), programmed instructions and stored information (id. at FIG. 3, item 86, FIGS. 10A and 10B), and means for generating signals to the processor for modifying the downloaded information (id. at FIG. 10A, items 158, 160, and 164). See also id at 4:32-42. (Request for Reexamination 37; underlining added for emphasis.) Thus, contrary to Patent Owner’s arguments, Requester did point to disclosure in Paschke for a teaching of programmed instructions. In any event, it is the Examiner’s rejection that is before us for review. The Examiner also cited support in Paschke for “programmed instructions.” The Examiner, in adopting the rejection, stated that Paschke teaches that the “breakdown and the display of the information are based on the program stored in the memory and the information transmitted from the central site. (see Pa[s]chke, col. 7, lines 30-45).” (Final Rejection dated February 23, 2012, p. 5.) Column 7, lines 30-43 of Paschke is reproduced below (underlining added for emphasis): Appeal 2013-010936 Reexamination Control 90/011,791 Patent 5,475,585 8 FIGS. 10A and 10B illustrate in flow chart form a computer program for storing information in memory 90 and accessing it such that the information can be displayed in the manner described above. As previously discussed information can be transmitted from the central site 24 to the memory 90 by a variety of methods which is represented in FIG. 10A at 158. Memory index pointers are generated for each category of information at 160. In the case where a category of information contains too many items to be displayed on display 70, it is broken down at 164 into subsets and associated memory pointers are generated. The cited passage expressly refers to a “a computer program for storing information in memory 90 and accessing it such that the information can be displayed,” which would be reasonably understood to mean “programmed instructions” because a “computer program” is defined as “a sequence of instructions, stored in any medium, that can be interpreted and executed by a computer.”6 Requester further argues that Paschke does not describe a computer program “stored in memory” (Appeal Br. 10). However, column 4, lines 32- 42 of the Paschke patent, cited by Requester (Requester for Reexamination 7 and 25) and reproduced below (underlining added for emphasis), teaches a program (“operating system software and other control programs”) stored in memory: In FIG. 3 as shown in block diagram form are the various functional elements of the preferred embodiment of a location unit 18. Controlling the unit is a microprocessor or microcomputer 82 . . . . A read only memory 86 containing operating system software and other control programs is connected to the processor 82 by a line 88, and a non-volatile 6 http://www.thefreedictionary.com/computer+program (accessed November 18, 2013). Appeal 2013-010936 Reexamination Control 90/011,791 Patent 5,475,585 9 random access memory 90 for storing display data and control programs is connected to the processor by a line 92. Patent Owner also contends “Requester alleged that item 86 shown in FIG. 3 of Paschke teaches the feature of ‘stored information’ in the ‘585 patent. However, item 86 of Paschke is a ROM [read only memory].” (Appeal Br. 9). Patent Owner argues that although Bush ‘863 discloses RAM [random access memory], Bush ‘863 “does not teach or suggest modifying the downloaded information based on the stored information. Thus, any possible combination of Bush ‘863 and Paschke does not teach or suggest modifying the downloaded information based on the stored information.” (Appeal Br. 11.) This argument is not persuasive. The claim does not specify whether the “stored information” is stored on RAM or ROM. Nonetheless, the Examiner found that Paschke7 “teaches downloading information and storing them in memory by a variety of methods, (see Pa[s]chke col. 7, lines 35-40) and Bush ‘863 teaches storing information in RAM. (see Bush ‘863 fig. 3, item 100).” (Answer 4-5). Thus, it would have been obvious to one of ordinary skill in the art to have used RAM in Paschke’s method because RAM was a conventional storage media known in the art. Patent Owner also contends that one of ordinary skill in the art would not have had reason to combine Bush ‘863 and Paschke (Appeal Br. 11). However, Requester gave a specific reason on pages 38-39 of the Request 7 Paschke teaches: “a non-volatile random access memory 90 for storing display data and control programs is connected to the processor by a line 92.” (Paschke, col. 4, ll. 39-43.) Appeal 2013-010936 Reexamination Control 90/011,791 Patent 5,475,585 10 for Reexamination for combining the references. Patent Owner did not identify a defect in this reasoning and we find none. For the foregoing reasons, we affirm the rejection of claim 1 as obvious over Bush ‘863 and Paschke. Claims 3, 5, 6, 9, and 21-23 were not separately argued and this fall with claim 1. See 37 § C.F.R. 41.37(c)(vii). We affirm the rejection of these claims for the reasons given by the Examiner and Requester. (See, e.g., Request for Reexamination 45-56 and 74-83.) V. OBVIOUSNESS IN VIEW OF BUSH ‘863, PASCHKE, AND BUSHNELL Claim 7 is drawn to a system according to claim 6, “wherein said transaction processor further transmits transaction information to said vendors or service providers, allowing said vendors or service providers [to] supply selected products or services.” It was acknowledged by Requester that Bush ‘863 does not “disclose allowing vendors to directly supply selected products/services, home shopping systems for remotely purchasing merchandise that will later be supplied by the vendor,” but states that such methods “were well known in the art at the time of the alleged invention” as taught by Bushnell who “discloses an interactive purchasing system that allows users to remotely purchase merchandise from various stores.” (Request for Reexamination 140-141.) Requester contends it would have been obvious “to implement the Bush ‘863 pay-per-view entertainment system, such that purchased products could be supplied by the vendor as taught by Bushnell. Such a Appeal 2013-010936 Reexamination Control 90/011,791 Patent 5,475,585 11 modification would have been an obvious variation, requiring no technological insight.” (Id. at 141.) The Examiner did not supplement this reasoning (Final Rejection 6; Answer 6). Patent Owner argues that in Bush ‘863 “source 10 obtains prerecorded entertainment from record companies and is also responsible for the advertising of the system, customer service and customer billing (col. 2, lines 30-47).” (Appeal Br. 12.) As shown in FIG. 1 of Bush ‘863, the national credit network 16 transmits transaction (billing) information to the source 10, and NOT to the record companies (“vendors or service providers”). As such, Bush ‘863 teaches that the fund (money) is transferred to the source 10 from the clearing house 200 and then is transferred to record companies (vendors) by the source 10. (Appeal Br. 12.) Patent Owner argues that Bush ‘863 relates to a “non-interactive purchasing system” where transaction information is sent by the credit network or bank to the source 10, not by the transactional processor to the source 10 as the claims would require. Bushnell, on the other hand, argues Patent Owner, relates to an interactive purchasing system in which shopping is conducted in a bi- directional manner in which the interactions are through a vendor and purchasers (id. at 13). For this reason, Patent Owner contends the skilled worker would not have had reason to combine Bush ‘863 with Bushnell’s teaching. We agree. As argued by Patent Owner, Bush ‘863 teaches that source 10, which serves as a vendor, supplies products to a customer. The receiver 14, which serves as a “transaction processor,” transmits the transaction Appeal 2013-010936 Reexamination Control 90/011,791 Patent 5,475,585 12 information to a national credit network 16 or bank 17, which in turn, transmits the information to source 10 (Bush ‘863, Fig. 1). Thus, Bush ‘863 does not teach that the “said transaction processor further transmits transaction information to said vendors or service providers” as required in the claim. Rather, the “transaction information” is transmitted by the national credit network or bank to the source 10 vendor. The Requester, and Examiner, proposed modifying Bush ‘863 by transmitting the transaction information to the vendor, i.e., receiver 14, but this would be contrary to Bush ‘863 which teaches a system that expressly avoids direct interactions between vendors and purchasers by using a source 10, which delivers prerecorded entertainment to a purchaser and which interacts with the national credit card network or bank. The Requester’s reasoning that it would have been obvious “to implement the Bush ‘863 pay per view entertainment system, such that purchased products could be supplied by the vendor as taught by Bushnell” (Request for Reexamination 141) ignores the fact that Bush ‘863 is structured differently than Bushnell and also provides no persuasive reason as to why one of ordinary skill would have had reason to have modified the interaction between purchaser and vendor in Bush ‘863 to have made it like Bushnell. We thus reverse the rejection of claim 7. Claim 8 Claim 8 depends on claim 7. Because we have reversed the rejection of claim 7, we must also reverse the rejection of claim 8. Appeal 2013-010936 Reexamination Control 90/011,791 Patent 5,475,585 13 Claims 28-30 Independent claim 28 is drawn to a method “for real-time authorization of payment for goods and services from a plurality of retailers available through a video menu.” The method comprises a step of “(f) transmitting transaction information to said plurality of retailers by the payment processor, allowing said retailers supply selected products or services.” This step is similar to the step recited in claim 7, which we concluded was not described by the combination of Bush ‘863 and Paschke. We therefore reverse the rejection of independent claim 28, and dependent claims 29 and 30. VI. OBVIOUSNESS IN VIEW OF BUSH ‘863 AND YOUNG The only issue in dispute in this rejection is whether the combination of Bush ‘863 and Young teaches the limitation of claim 1 in which the “receiver means [is] including a processor, programmed instructions and stored information for acting on downloaded information, and means for generating signals to said processor for modifying the downloaded information based on the programmed instructions, stored information and the downloaded information.” The Examiner found that this limitation was described in Young. The Examiner stated: The combination of Bush ‘863 and Young teaches this limitation because [of] Young teaching modifying display of channels listings based on the user preference. (see Young; col. 11 line 65-col. 12 lines 65) In Young, the television schedule controller customizes the downloaded channel information with the stored information. (see Young; col. 12, lines 63-col. 12, lines 12) Using the processor of controller, (see Young; col. 12, lines 63-65) the preference information set by a user (see Appeal 2013-010936 Reexamination Control 90/011,791 Patent 5,475,585 14 Young, col. 11, lines 45-70), and the stored information (see Young, col. 12, lines 64-66), Young modifies the display menu of channel listing. (see Young col. 12 , lines 8-15) The preference information set by the user is both programmed instruction and stored information because it is stored locally and it is used to customize the menu display; (see Young, co. 12, lines 64-66) and the channel information is stored information and downloaded information because it is downloaded and stored in the memory. (see Young col. 12, lines 64-66) (Answer 9; underlining added for emphasis.) Patent Owner contends that the Examiner erred because the claim requires three different elements: programmed instructions, downloaded information, and stored information. We agree that the Examiner did not establish by a preponderance of the evidence that all three elements are described or suggested by the combination of Bush ‘863 and Young. The Examiner identifies two elements, preference information and channel information, which are said to account for the three elements recited in the claim. Requester’s rejection as proposed in the Request for Reexamination is no better. Requester writes: Young discloses that users can combine preference information (i.e., favorite MY channels) with locally stored information (i.e., unabridged channels) for creating menus based on previously loaded and stored information combined with the transmitted information. (Request for Reexamination 134.) Requester asserted that this disclosure in Young satisfied the claim limitation because it was similar to Patent Owner’s characterization of the disputed limitation during prosecution of the application which led to the ‘585 patent (id. at 133-134). Appeal 2013-010936 Reexamination Control 90/011,791 Patent 5,475,585 15 This argument is not persuasive. Requester did not identify disclosure in Young that corresponds to “programmed instructions,” as required by claim 1. In the Patent Owner’s remarks referred to by Requester, Patent Owner specifically referred to “programmed instructions,” and thus did not ignore this limitation as Requester did. Thus, we agree with Patent Owner that the “Examiner fails to provide any reasons why any disclosure of Young teaches each one of the programmed instructions, stored information and the downloaded information.” (App. Br. 20.) Because neither Requester nor Examiner identified sufficient support for the disputed claim limitations in Young or the combination of Bush‘863 and Young, we are compelled to reverse the rejection of claim 1, and dependent claim 5. Independent claim 21 also requires downloaded information, programmed instructions, and stored information (‘585 patent, claim 21(b)). Consequently, we reverse the rejection of independent claim 21, and dependent claims 22 and 23 for the same reasons as for claim 1. VII. SUMMARY The rejection of claims 1-3, 5, 6, 9, and 21-23 as obvious in view of Bush ‘863 and Paschke is affirmed. The rejection of claims 7, 8, and 28-30 as obvious in view of Bush ‘863, Paschke, and Bushnell is reversed. The rejection of claims 1, 5, and 21-23 as obvious in view of Bush ‘863 and Young is reversed. Appeal 2013-010936 Reexamination Control 90/011,791 Patent 5,475,585 16 TIME PERIOD FOR RESPONSE Requests for extensions of time in this ex parte reexamination proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f). AFFIRMED-IN-PART PATENT OWNER: HERSHKOVITZ & ASSOCIATES, PLLC 2845 DUKE STREET ALEXANDRIA, VA 22314 THIRD PARTY REQUESTER: SHOOK, HARDY & BACON LLP 2555 GRAND BLVD. KANSAS CITY, MO 64108-2613 Copy with citationCopy as parenthetical citation