Ex Parte Marples et alDownload PDFPatent Trial and Appeal BoardMar 18, 201611592868 (P.T.A.B. Mar. 18, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111592,868 11103/2006 22242 7590 03/21/2016 FITCH EVEN TABIN & FLANNERY, LLP 120 SOUTH LASALLE STREET SUITE 1600 CHICAGO, IL 60603-3406 FIRST NAMED INVENTOR David Marples 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 94584 2544 EXAMINER FEENEY, BRETT A ART UNIT PAPER NUMBER 2822 MAILDATE DELIVERY MODE 03/2112016 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 Ex parte DAVID MARPLES, STANLEY MOYER, and CHRIS DRAKE Appeal2013-008153 Application 11/592,868 Technology Center 2800 Before JOHN C. KERINS, LYNNE H. BROWNE, and LEE L. STEPINA, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE David Marples et al. (Appellants) seeks our review under 35 U.S.C. § 134(a) of the Examiner's final rejection of claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. THE INVENTION Appellants' invention is directed to a system, method, and apparatus for generating customer relational marketing information in a system for the Appeal2013-008153 Application 11/592,868 distribution of digital content. Independent claim 1, reproduced below, is illustrative: 1. A system for generating customer relational marketing information in a system for the distribution of digital content, the system comprising: a digital content mediator server configured to: determine whether an electronic transfer of digital content over a network from a source to a destination is permitted prior to the electronic transfer of digital content over the network from the source to the destination; and authorize a transaction between the source and the destination; a transaction log coupled to said digital content mediator server, the transaction log configured to record information about an authorized transaction; a content description database configured to provide information regarding the digitai content eiectronicaiiy transferred over a network; and a customer-content history database configured to receive and combine the information about the authorized transaction and the information regarding the digital content electronically transferred over a network to generate customer relational marketing information. THE REJECTIONS ON APPEAL The Examiner has rejected claims 1-21under35 U.S.C. § 103(a) as being unpatentable over Lee (US 6,636,966B1, issued Oct. 21, 2003) in view of Cooper (US 2001/0051996 A 1, published Dec. 13, 2001 ). 2 Appeal2013-008153 Application 11/592,868 ANALYSIS Claims 1-21----0bviousness-Lee/Cooper Appellants present the same arguments directed to independent claims 1, 2, and 19, and present no arguments for the separate patentability of dependent claims 3-18, 20, and 21. Appellants instead assert that the dependent claims are patentable due to their dependency on allegedly allowable independent claims. Appeal Br. 18. Accordingly, we will take claim 1 as representative, and claims 2-21 stand or fall with claim 1. The Examiner finds that Lee discloses all limitations set forth in claim 1, with the exception that Lee determines whether to permit access to digital content as opposed to whether to permit transfer of digital content over a network. Final Act. 5. The Examiner relies on Cooper as teaching such a transfer of digital content over a network. Id. at 5---6. Appellants contend that Lee explicitly teaches away from "electronic transfer of digital content over a network" and is therefore an improper primary reference upon which to base a rejection. Appeal Br. 11-14; Reply Br. 6. In support of this position, Appellants identify two instances referencing electronic transfer of digital content from Lee, and assert that both instances teach away from electronic transfer of digital content over a network. Id. at 11-12. The first passage states that "electronic downloading, in current forms, is relatively susceptible to misuse." Lee, col. 1, 11. 33-34. The second passage in Lee relied on by Appellants states: Typically, this manner of distribution means that distribution of the physical media and payment for content must be tightly coupled such as by . . . electronic downloading and electronic commerce, and the like. Such distribution methods have 3 Appeal2013-008153 Application 11/592,868 substantial associated costs, such as costs of warehousing, retail personnel, and the like. Lee, col. 1, 11. 52-60; see Appeal Br. 13. We are not persuaded that either of these cited passages teaches away from "electronic transfer of digital content over a network." In the former passage, the "misuse" to which electronic downloading is susceptible is described as possible "copyright violations, depriving owners of potential revenue." Lee, col. 1, 11. 35-36. At most, that passage as a whole suggests that unprotected electronic transfer of digital content over a network might result in the content owner not realizing all of the revenue to which it is entitled, but does not discourage electronic downloading per se. In the latter passage, the "substantial associated costs" are described as stemming from the coupling of payment and distribution of content, not from the electronic downloading of digital content generally. Lee, col. 1, 11. 39---60. Moreover, Lee describes the benefits of a "more flexible distribution system . .. allowing content owners to . .. bit-stream content" resulting in "enhance[ d] revenue streams for publishers and content owners" as well as "mak[ing] content more widely available to consumers." Id. at col. 1, 11. 23- 29. As such, Appellants' argument that Lee explicitly teaches away from electronic transfer of digital content over a network is not persuasive. Next, Appellants argue that "Lee explicitly teaches away from, and cannot operate by, 'determining whether an electronic transfer of digital content over a network . .. is permitted prior to the electronic transfer of digital content over the network' . .. and therefore is an improper primary reference upon which to base a rejection." Appeal Br. 15. Appellants assert that, in Lee, digital content has already been transferred to a user before a determination that the user may access such content is made, and 4 Appeal2013-008153 Application 11/592,868 thus no determination of whether an electronic transfer of digital content is permitted occurs prior to such a transfer. Id. at 16. In response, the Examiner submits that although Lee's user may begin with possession of digital content, the user is forbidden from accessing such content until a determination that the user may access such content is made. Ans. 27. The Examiner characterizes providing access to digital content after permissions are verified and transferring digital content after permissions are verified as "species of providing access to digital content." Id. As such, the Examiner submits that Lee's system of determining whether to allow a user access to digital content and subsequently transferring a content key to that user, does not teach away from determining whether an electronic transfer of digital content over a network is permitted prior to such a transfer. Rather, Lee describes an alternative means of enabling or restricting access to content based on distributor criteria. Id. Appellants' further arguments either fail to recognize the Examiner's proposed modification to Lee, or otherwise mischaracterize the Examiner's proposed modification. Appellants contend that "there is absolutely no motivation nor reason to alter Lee such that a customer must first go through the trouble to receive a physical storage medium from another customer to subsequently fill it with content received later over a network from that same customer." Appeal Br. 16-17. Additionally, Appellants contend that a person of skill in the art would not be motivated to alter Lee such that the receiving customer, after receiving permission to accept the transfer, must return the physical storage medium back to the issuing customer so that they can now copy the files onto it and transfer it back to the receiving customer. Id. at 17. However, the Examiner has not proposed such modifications. Instead, the Examiner proposes modifying Lee such that after access to 5 Appeal2013-008153 Application 11/592,868 content is granted, the content itself is transferred to the user (as taught by Cooper), as opposed to after access to content is granted, a content key is transferred to the user (as taught by Lee). Ans. 27. Such a modification does not require a customer to receive a physical storage medium from another customer nor does it require a customer to return a physical storage medium back to the issuing customer so that he may copy the files onto it and transfer it back to the receiving customer. Appellants further submit that "the content cannot be transferred later from the supplier as this goes against one of Lee's stated purposes to push the cost and trouble of making copies onto the customers." Appeal Br. 17 (citing Lee, col. 2, 11. 30-34) (emphasis omitted). However, Lee is not concerned merely with pushing such costs onto the customer, Lee is more generally concerned with providing a system where customers are permitted to make copies while providing for "copyright protection" and "appropriate payments to content owners." Lee, col. 2, 11. 27, 33-34. Lee points out that this can be accomplished by uncoupling of the distribution of content and payment therefor. Id. at col. 1, 11. 52---60. Appellants have not shown that the Examiner's proposed modification to Lee is contrary to such a purpose. In view of the foregoing, we are not apprised of Examiner error with respect to the rejection of claim 1 as being unpatentable over Lee and Cooper. The rejection of claim 1 is sustained, and claims 2-21 fall with claim 1. DECISION The rejection of claims 1-21 as being unpatentable over Lee and Cooper is affirmed. 6 Appeal2013-008153 Application 11/592,868 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 7 Copy with citationCopy as parenthetical citation