Ex Parte Hunter et al

Board of Patent Appeals and Interferences

Feb 19, 2009

09707273 (B.P.A.I. Feb. 19, 2009)

1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHARLES ERIC HUNTER,
BERNARD L. BALOU, JR., KELLY C. SPARKS,
and JOHN H. HEBRANK
____________

Appeal 2008-4518
Application 09/707,273
Technology Center 3600
____________

Decided:1 February 19, 2009
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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STATEMENT OF THE CASE
Charles Eric Hunter, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 40-72. Claims 1-39 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.2

THE INVENTION
The invention relates to music distribution.
Claim 40, reproduced below, is illustrative of the subject matter on
appeal.
40. A method comprising:
automatically charging a consumer for a
music selection made by the consumer, said
charging triggered upon the consumer recording
the music selection on a storage medium located at
a consumer site.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Schulhof
McMillen
US 5,572,442
US 5,483,535
Nov. 5, 1996
Jan. 9, 1996

2 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Dec. 26, 2006) and the Examiner’s Answer (“Answer,” mailed Aug. 6,
2007).
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The following rejections are before us for review:
1. Claims 40-42, 48, 50, 52-54, 60, 62, and 64-71 are rejected under 35
U.S.C. § 102(b) as being anticipated by Schulhof.
2. Claims 49, 51, 61, 63, and 72 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schulhof.
3. Claims 43-47 and 55-59 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schulhof and McMillen.

ISSUES OF LAW
The first issue before us is whether the Appellants have shown that the
Examiner erred in rejecting claims 40-42, 48, 50, 52-54, 60, 62, and 64-71
under 35 U.S.C. § 102(b) as being anticipated by Schulhof. The second
issue before us is whether the Appellants have shown that the Examiner
erred in rejecting claims 49, 51, 61, 63, and 72 under 35 U.S.C. § 103(a) as
being unpatentable over Schulhof. This issue turns on whether Schulhof
describes “automatically charging a consumer ... upon the consumer
recording the music selection on a storage medium located at a consumer
site" (claim 40) (emphasis added).
The third issue before us is whether the Appellants have shown that
the Examiner erred in rejecting claims 43-47 and 55-59 under 35 U.S.C. §
103(a) as being unpatentable over Schulhof and McMillen. This issue turns
on whether the subject matter of claim 43, which further defines the method
described in claim 40 by including steps of "informing the consumer that the
music selection is available for purchase if said music selection is about to
be made at a peer-to-peer music sharing system used by said consumer" and
"providing a mechanism for the consumer to order said music selection
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while at a website of said peer-to-peer music sharing system," (claim 43)
would have been obvious to one of ordinary skill in the art given Schulhof
and McMillen.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Claim construction
1. Claim 40 calls for “automatically charging a consumer for a music
selection made by the consumer, said charging triggered upon the
consumer recording the music selection on a storage medium
located at a consumer site.”
2. The Specification does not provide a definition for the claim terms
“automatically,” "charging," and "triggered."
3. The ordinary and customary meaning of “automatically” is “done
without conscious thought or volition, as if mechanically, or from
force of habit.” (See Webster’s New World Dictionary 93 (3rd Ed.
1988.)(Entry 1. for “automatically.”)
4. The ordinary and customary meaning of “charge” is “to ask
payment.” (See Webster’s New World Dictionary 236 (3rd Ed.
1988.)(Entry 2. (vi.) for “charge.”)
5. The ordinary and customary meaning of “trigger” is “to initiate (an
action).” (See Webster’s New World Dictionary 1429 (3rd Ed.
1988.)(Entry 2. (vt.) for “trigger.”)
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The scope and content of the prior art
6. Schulhof relates to the distribution of subscription and on-demand
audio program material and "to high speed recording of audio
program material from a remote source on a subscription and/or
on-demand basis using a portable high capacity audio recording
and playback device." Col. 1, ll. 10-13.
7. Schulhof describes an operation whereby a subscriber selects a
desired audio program material for recording onto a portable
device and where the subscriber "authorizes billing to a credit card
or other account" once the subscriber selects the desired audio
program material. See col. 5, ll. 5-20:
a Walkman®. Operation of the system is as
follows: (1) the subscriber attaches the portable
device to a cable television converter and selects a
dedicated data exchange channel, e.g.[,] Channel
66, that provides a menu display which includes a
catalog of available audio program material; (2)
using a two-way feedback selection device, such as
the television remote control unit or a touch tone
telephone connection to a control center, the
subscriber selects the desired audio program
material and then authorizes billing to a credit card
or other account; (3) high speed data transfer may
begin immediately, or it may be deferred as
desired (for example, to a time when the television
cable is not otherwise in use, e.g.[,] 2:00 A.M.);
(4) after data transfer is complete, the portable
device may be removed from the base location and
taken to a vehicle or other mobile location for
playback as desired.

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8. McMillen relates to peer-to-peer communications networks.
9. McMillen describes the use of a peer-to-peer communications
network as a means for distributing music. Col. 3, ll. 50-61.
Any differences between the claimed subject matter and the prior art
10. With respect to claim 43, it combines the step of "informing [a]
consumer that [a] music selection is available for purchase" with
the use of a peer-to-peer network that separately disclosed in
Schulhof and McMillen. Claim 43 also requires a mechanism for
ordering a music selection at a website. The cited references do
not disclose the use of a website.
The level of skill in the art
11. Neither the Examiner nor the Appellants have addressed the level
of ordinary skill in the pertinent art of ordering music. We will
therefore consider the cited prior art as representative of the level
of ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d
1350, 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings
on the level of skill in the art does not give rise to reversible error
‘where the prior art itself reflects an appropriate level and a need
for testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v.
Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).
Secondary considerations
12. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

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PRINCIPLES OF LAW
Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S. Ct. at 1734 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”) The Court
in Graham further noted that evidence of secondary considerations “might
be utilized to give light to the circumstances surrounding the origin of the
subject matter sought to be patented.” 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 40-42, 48, 50, 52-54, 60, 62, and 64-71 under
§ 102(b) as being anticipated by Schulhof.
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The Appellants argued claims 40-42, 48, 50, 52-54, 60, 62, and 64-71
as a group (Br. 5-8). We select claim 40 (see supra) as the representative
claim for this group, and the remaining claims 41, 42, 48, 50, 52-54, 60, 62,
and 64-71 stand or fall with claim 40. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
A determination that a claim is anticipated under
35 U.S.C. § 102(b) involves two analytical steps.
First, the Board must interpret the claim language,
where necessary. Because the PTO is entitled to
give claims their broadest reasonable
interpretation, our review of the Board's claim
construction is limited to determining whether it
was reasonable. In re Morris, 127 F.3d 1048,
1055 (Fed. Cir. 1997). Secondly, the Board must
compare the construed claim to a prior art
reference and make factual findings that “each and
every limitation is found either expressly or
inherently in [that] single prior art reference.”
Celeritas Techs. Ltd. v. Rockwell Int'l Corp., 150
F.3d 1354, 1360 (Fed. Cir. 1998).
In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004) (footnote omitted).
Given the ordinary and customary meanings of the claim terms
"automatically," charging," and "triggered," the broadest reasonable
construction of the method of claim 40 in light of the Specification as it
would be understood by one of ordinary skill in the art is that it encompasses
someone or something asking, without conscious thought, payment from a
consumer for a music selection, where the request for payment is initiated
upon the consumer recording the music selection on a storage medium
located at a consumer site. FF 1-5.
Turning now to Schulhof, it describes a method whereby a subscriber
attaches a portable device to a cable television converter and selects a
channel that provides a menu which includes a catalog of available audio
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program material from which the subscriber may select a desired audio
program material (via a remote control unit), whereupon the audio program
material is recorded on the subscriber's portable device, which is a storage
medium at a consumer site. FF 7. Schulhof thus expressly describes all the
limitations of the claimed method except for “automatically charging [the]
consumer ... upon the consumer recording the music selection on a storage
medium located at a consumer site." (Emphasis added.)
According to Schulhof, the subscriber "authorizes billing to a credit
card or other account" once the subscriber selects the desired audio program
material. FF 9. Schulhof does not explicitly state, however, when the
consumer is actually billed and, concomitantly, when the subscriber is
actually asked for payment.
One of ordinary skill in the art readily understands that once a
consumer authorizes billing to a credit card for payment of the purchase of a
product, the credit card will normally be automatically charged and that that
automatic charge will be effected either at the time of authorization or soon
thereafter. This is a natural result that flows from an authorization to bill a
credit card. “[A] limitation or the entire invention is inherent and in the
public domain if it is the ‘natural result flowing from’ the explicit disclosure
of the prior art.” Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1379
(Fed. Cir 2003).
In our view, in describing that the subscriber "authorizes billing to a
credit card or other account" once the subscriber selects the desired audio
program material, Schulhof necessarily, and thus inherently, includes a step
whereby the credit card is automatically charged either at the time of
authorization or soon thereafter. One of ordinary skill in the art reading
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Schulhof would readily understand that once the subscriber "authorizes
billing to a credit card or other account" upon selecting the desired audio
program material to be recorded, the credit card would be automatically
charged either at the time of authorization, i.e., upon selecting the desired
audio program material to be recorded, or soon thereafter, i.e., "upon the
consumer recording the music selection on a storage medium located at a
consumer site" (claim 40).
Thus, we agree with the Examiner that the aspect of the claimed
method whereby a consumer is charged upon recording of a music selection
is "inherent to the cable system taught by Schulhof" (Answer 8). We find
that the Examiner has made out a prima facie case of anticipation for the
claimed subject matter given Schulhof.
The Appellants' sole argument is that Schulhof
is silent on how and when the consumer is charged
or billed for these orders [i.e., the selected audio
program material]. In fact, Schulhof at al. teaches
or suggests that the consumer is charged at the
time of ordering, as opposed to "upon the
consumer recording the music selection on a
storage medium located at a consumer site,"
according to claim 40.
Br. 6. We are not persuaded by this argument as to error in the rejection. As
we have explained, in describing that the subscriber "authorizes billing to a
credit card or other account" once the subscriber selects the desired audio
program material, Schulhof necessarily, and thus inherently, includes a step
whereby the credit card is automatically charged either at the time of
authorization or soon thereafter. When the credit card is automatically
charged soon after the billing of the credit card is authorized, the automatic
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charge would occur "upon the consumer recording the music selection on a
storage medium located at a consumer site" (claim 40) (emphasis added).
While Schulhof is silent on how or when the consumer is charged or billed
for orders of selected audio program material to be recorded on a portable
device, the automatic charging of a credit card at the time of billing
authorization or soon thereafter is a common business practice inherent to
the Schulhof operation.
The law of anticipation does not require that the
reference “teach” what the subject patent teaches.
Assuming that a reference is properly “prior art,” it
is only necessary that the claims under attack, as
construed by the court, “read on” something
disclosed in the reference, i.e., all limitations of the
claim are found in the reference, or “fully met” by
it.
Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983).
Accordingly, we find the Appellants' argument unpersuasive as to
error in the rejection of claim 40. We reach the same conclusion as to the
rejection of claims 41, 42, 48, 50, 52-54, 60, 62, and 64-71 which stand or
fall with claim 40. As a result, we affirm the rejection under § 102(b) of
these claims over Schulhof.

The rejection of claims 49, 51, 61, 63, and 72 under § 103(a) as being
unpatentable over Schulhof.
The Appellants’ sole argument against the rejection of claims 49, 51,
61, 63, and 72 is that Schulhof does not teach or suggest the claim limitation
"upon a recording by the consumer of the music selection on a storage
medium located at a consumer site." Br. 8-9. We addressed this argument
supra. For the foregoing reasons, we do not find this argument persuasive as
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to error in the rejection of claims 49, 51, 61, 63, and 72 and thus we will
sustain the rejection of these claims

The rejection of claims 43-47 and 55-59 under § 103(a) as being
unpatentable over Schulhof and McMillen.
Against the rejection of all claims 43-47 and 55-59, the Appellants
argue that Schulhof does not teach or suggest the claim limitation "upon a
recording by the consumer of the music selection on a storage medium
located at a consumer site." Br. 8-9. We addressed this argument supra.
For the foregoing reasons, we do not find that argument persuasive as to
error in the rejection of these claims.

Claim 43
The Appellants make a separate argument for patentability of claim
43. Br. 9-10.
Claim 43 depends on claim 40, further defining the method described
in claim 40 as including steps of "informing the consumer that the music
selection is available for purchase if said music selection is about to be made
at a peer-to-peer music sharing system used by said consumer" and
"providing a mechanism for the consumer to order said music selection
while at a website of said peer-to-peer music sharing system."
The Examiner found that Schulhof did not disclose a peer-to-peer
music sharing system but relied on McMillen to show such a system,
concluding that
[i]t would have been obvious to one of ordinary
skill in the art at the time of the invention to
combine Schulhof et al., and McMillen et al.
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teachings to suggest that product/system/method's
taking place in a peer-to-peer environment because
this environment fit with distributing music among
different parties for one copy of requested
music ....
Answer 5-6.
The Appellants agree that McMillen discloses a peer-to-peer network
but argued that, with respect to McMillen
there is no description of "informing the consumer
that the music selection is available for purchase if
said music selection is about to be made at a peer-
to-peer music sharing system." This "informing
the consumer," would be, for example, to give the
consumer the option to purchase the music rather
than proceed with procuring the music selection on
a peer-to-peer sharing system. In fact ... the
network described in McMillen is described for
use in music synthesis, rather than music selection.
Br. 9-10. The Appellants also argued that "[t]here is no description in
McMillen of a ‘music selection’ that ‘is about to be made at a peer-to-peer
music sharing system ...’.” Br. 10.
The Examiner responded to this argument as follows:
[as to music selection using a peer-to-peer
network] these features are suggested by cited
evidences in Final Office Action (a selection was
done by Schulhof, and McMillen taught that
selection can be distributed with a peer-to-peer
network; about "informing the consumer that
selection is available" is suggested by Schulhof as
teaching of interactive communication abilities.
Answer 10.
We agree with the Examiner.
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First, the Appellants' attack on McMillen fails to appreciate the
Examiner's application of the combination of prior art references as a whole.
The Appellants have not addressed the combination of prior art references as
a whole but simply improperly argues the merits of McMillen separate from
and without taking into account the disclosure of Schulhof. See In re Keller,
642 F.2d 413, 425 (CCPA 1981); In re Young, 403 F.2d 754, 757-58 (CCPA
1968).
Second, the Appellants' argument that McMillen does not describe
"informing the consumer that the music selection is available for purchase if
said music selection is about to be made at a peer-to-peer music sharing
system" does not appreciate the fact that the claim conditions the
"informing" step on the music selection being "about to be made at a peer-
to-peer music sharing system." The claim encompasses the situation where
no music selection "is about to be made at a peer-to-peer music sharing
system." In that situation, there is no requirement that the consumer be
informed about a music selection available for purchase and thus, in light of
the scope of the claim, it is not necessary to look to McMillen for a
disclosure of "informing the consumer that the music selection is available
for purchase if said music selection is about to be made at a peer-to-peer
music sharing system."
Third, notwithstanding that claim 43 is not limited to requiring the
"consumer [to be informed] that the music selection is available for purchase
if said music selection is about to be made," Schulhof necessarily informs
the consumer about a music selection about to be made because it describes
a menu which includes a catalog of available audio program material from
which the subscriber may select a desired audio program material. See FF 7.
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Also, it would have been obvious to substitute McMillen's peer-to-
peer system for Schulhof's cable system as the means for supplying the
music selection." [W]hen a patent claims a structure already known in the
prior art that is altered by the mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result," KSR at 1739-40. In that regard, the Appellants have not presented
sufficient evidence of an unpredictable result of using a peer-to-peer system
(as in McMillen) rather than a cable system (as in Schulhof) as the means
for providing a music selection whose availability for purchase a consumer
is to be informed of.
We note that claim 43 calls for the music selection to be made "while
at a website of said peer-to-peer music sharing system" (emphasis added) but
that the cited references do not mention a website. This is so because
Schulhof and McMillen are based on applications filed at a time when the
use of websites was just beginning to capture public interest. Given the
ubiquity of websites and the known benefit of using them to deliver content
to personal computers at the time of this invention, modernizing Schulhof so
that its menu of available audio program material would be made available
via a website would have been well within the knowledge of those of
ordinary skill in the art at the time of the invention. Cf. Leapfrog
Enterprises Inc. v. Fisher-Price Inc., 485 F.3d 1157, 1163 (Fed. Cir. 2007)
to update it using modern electronic components in
order to gain the commonly understood benefits of
such adaptation, such as decreased size, increased
reliability, simplified operation, and reduced cost
. . . . The combination is thus the adaptation of an
old idea or invention . . . using newer technology
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that is commonly available and understood in the
art.
Id. at 1162.
Accordingly, the combination of the steps of "informing the consumer
that the music selection is available for purchase if said music selection is
about to be made at a peer-to-peer music sharing system used by said
consumer" and "providing a mechanism for the consumer to order said
music selection while at a website of said peer-to-peer music sharing
system" would have been obvious to one of ordinary skill in the art given
Schulhof and McMillen at the time of the invention.

Claims 58 and 59
The Appellants make a further argument for the patentability of
claims 58 and 59. Br. 10-11. The argument is that these claims "are
allowable for the same reasons presented above as for claims 46 and 47."
Br. 10. But no separate reasons are given in the Brief for challenging the
rejection of claims 46 and 47. Claims 46 and 47 depend on claim 43.
Accordingly, presumably, the Appellants are relying on the arguments made
against the rejection of claim 43 in challenging the rejection of claims 46
and 47 and, by extension of the Appellants' argument, claims 58 and 59.
Since, for the foregoing reasons, we did not find the Appellants' arguments
persuasive as to error in the rejection of claim 34, we reach the same
conclusion as to the arguments when applied to the rejection of claims 58
and 59.

Claims 44-47 and 55-57
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The Appellants do further specifically address the merits of the
rejection of the remaining claims 44-47 and 55-57. All these claims depend
from claim 43. Accordingly, we sustain the rejection as to these claims for
the reasons already explained.

CONCLUSIONS OF LAW
We conclude that the Appellants have not shown that the Examiner
erred in rejecting claims 40-42, 48, 50, 52-54, 60, 62, and 64-71 under 35
U.S.C. §102(b) as being anticipated by Schulhof; claims 49, 51, 61, 63, and
72 under 35 U.S.C. § 103(a) as being unpatentable over Schulhof; and,
claims 43-47 and 55-59 under 35 U.S.C. §103(a) as being unpatentable over
Schulhof and McMillen.

DECISION
The decision of the Examiner to reject claims 40-72 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED
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