Ex Parte 6101534 et al

Board of Patent Appeals and Interferences

Sep 16, 2010

90008591 (B.P.A.I. Sep. 16, 2010)

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.
90/008,591 04/11/2007 6101534 1093-008 7502
29973 7590 09/17/2010
CAREY, RODRIGUEZ, GREENBERG & PAUL LLP
ATTN: STEVEN M. GREENBERG, ESQ.
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487
EXAMINER
WOOD, WILLIAM H
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/17/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte Rothschild Trust Holdings, LLC
Appellant
____________

Appeal 2010-003273
Reexamination Control 90/008,591
Patent 6,101,534
Technology Center 3900
____________

Before, SALLY C. MEDLEY, SCOTT R. BOALICK, and
KEVIN F. TURNER, Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.
DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
shown on the PTOL-90A cover letter attached to this decision.
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Reexamination Control 90/008,591
Patent 6,101,534
2
STATEMENT OF THE CASE
Rothschild Trust Holdings, LLC (“Rothschild”), the owner of the
patent under reexamination, appeals under 35 U.S.C. §§ 134(b) and 306
from a final Rejection of claims 1, 3-21, 23 and 26. We have jurisdiction
under 35 U.S.C. §§ 134(b) and 306. We REVERSE.
BACKGROUND
This reexamination proceeding arose from a third-party request for ex
parte reexamination, filed by Van Mahamedi (Request for Ex Parte
Reexamination, filed 11 Apr. 2007). Patent 6,101,534 issued with 22
claims. Claim 22 is not subject to reexamination. Rothschild has added
claims 23 and 26 and cancelled claims 2, 24 and 25.
Rothschild’s patented invention is related to an interactive remote
computer interface system that includes a remote server, a local processor,
and a compact, portable interchangeable computer readable medium
associated with the local processor. The remote sever includes primary site
data and at least one primary site address (i.e., URL or web site address) that
include at least a portion of the primary site data. The computer readable
medium includes auxiliary site data associated with the primary site data and
are encoded with a plurality of remotely accessible auxiliary site addresses
that each include select portions of auxiliary site data. The auxiliary site
addresses encoded on the computer readable medium are structured to be
accessed by the remote server so as to initiate utilization of the select
portions of the auxiliary site data by the local processor in conjunction with
the primary site data. Col. 12, l. 23-col. 14, l. 24.
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Claim 1 is representative:
1. An interactive, remote, computer interface system
comprising:
a remote server assembly, said remote server assembly
including a quantity of primary site data;
said remote server assembly including at least one primary
site address, said primary site address including at least a
portion of said primary site data and being distinct so as to
identify a location thereof on a computer network;
a local processor assembly;
said local processor assembly being coupled in data
transmitting and receiving communication with said remote
server assembly;
said local processor assembly being structured to access said
primary site address so as to achieve said data transmitting and
receiving communication with said remote server assembly;
at least one data storage assembly associated with said local
processor assembly and structured to contain a quantity of
auxiliary site data thereon, said auxiliary site data being
associated with said primary site data;
said data storage assembly including a compact, portable
and interchangeable computer readable medium;
said compact, portable and interchangeable computer
readable medium including a plurality of remotely accessible,
auxiliary site addresses encoded therein, each of said remotely
accessible, auxiliary site addresses including select portions of
said quantity of auxiliary site data; and
said remotely accessible, auxiliary site addresses being
structured to be remotely accessed by said remote server
assembly so as to initiate utilization of said select portions of
said quantity of auxiliary site data by said local processor
assembly in conjunction with said primary site data.
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Patent 6,101,534
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The Examiner relies on the following prior art references:
Mages et al. (“Mages”) 5,892,825 Apr. 06, 1999
Fidelibus, Jr. et al. (“Fidelibus”) 5,931,906 Aug. 03, 1999
Uranaka 5,937,158 Aug. 10, 1999
Reisman 6,594,692 Jul. 15, 2003
Rothschild appeals the following rejections under 35 U.S.C. § 102(e)2:
claims 1, 3-4, 6-8, 21, 23 and 26 as anticipated by Mages;
claims 1, 6-21 and 23 as anticipated by Reisman;
claims 1, 4 and 6-8 as anticipated by Uranaka;
claims 1 and 3-8 under as anticipated by Fidelibus.
Rothschild appeals the following rejections under 35 U.S.C. § 103(a):
claim 23 as unpatentable over Fidelibus;
claim 9 as unpatentable over Mages.
ISSUE
Does the applied prior art describe auxiliary site addresses encoded on
a compact, portable, and interchangeable computer readable medium that are
structured to be remotely accessed by a remote server?
FINDINGS OF FACT
Patent 6,101,534
1. Patent 6,101,534 discloses that the “interchangeable computer
readable medium [] is preferably structured such that only the remote

2 Rothschild additionally argues that there is no substantial new question of
patentability specifically with respect to Reisman and Mages. (App. Br. 18-
22; Reply Br. 13-16, 18). Since we reverse the rejections over all of the
prior art, we need not and do not address the arguments regarding the
substantial new question of patentability.

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Patent 6,101,534
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server assembly [] can access the auxiliary site data at the auxiliary
site addresses.” Col. 13, ll. 59-62.
2. “[T]he remotely accessible, auxiliary site addresses are specifically
encoded so as to restrict access by the local processor assembly []
unless the access is directed by the remote server assembly [].” Col.
14, ll. 34-37.
Mages
3. Mages describes providing a CD-ROM to an end-user in “crippled”
form in which critical information such as the video-audio header is
removed from the video/audio files stored on the CD-ROM. Col. 6, ll.
18-24; col. 6, l. 66-col. 7, l. 20.
4. The end-user requests an uncrippling key from a remote server, which
sends an encoded key to the end-user’s computer where the key is
caught by a catcher program and stored in the RAM of the end-user’s
computer. Col. 5, l. 64-col. 6, l. 17; col. 7, ll. 21-42.
5. A player subroutine of the catcher program decodes the key, combines
the key with the CD-ROM video/audio data and passes the now
uncrippled CD-ROM video/audio data to a local audio-video system
for immediate playback. Col. 7, l. 47-col. 8, l. 8; fig. 8.
Reisman
6. Reisman discloses an offline browser operating at a local computer
station for viewing locally stored Web pages containing local content
elements that are accessed via hyperlinks. Col. 39, l. 54-col. 40, l. 5;
col. 40, ll. 16-19.
7. An information transporter component, initiated by the local Web
page, automatically retrieves at least one new content element from a
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remote information source to update or augment the local web page.
Col. 39, l. 66-col. 40, l. 5.
8. The offline browser is utilized to access the new content elements via
the local Web page and also provide user interface functions for
accessing the new content. Col. 40, ll. 6-10.
9. An update of a local content element is preferably locally stored and is
transparently accessed and integrated with other local content
elements for viewing and processing by the user with the offline
browser. Col. 41, ll. 15-21.
Uranaka
10. Uranaka describes a catalog shopping system that includes an
electronic catalog on a DVD, a catalog shopping client that is a local
computer used by the catalog shopping user and a catalog shopping
server. Col. 17, l. 17-col. 18, l. 3; figs. 12, 14.
11. The catalog shopping server determines a script for displaying the
electronic catalog DVD data on the catalog shopping client display
based on purchase history information and transfers the script to the
catalog shopping client. Col. 19, ll. 13-21; fig. 14: step 1402.
12. The catalog shopping client controls the DVD driving means based on
the display script and sends electronic catalog DVD data to be
displayed on the catalog shopping client display based on the script.
Col. 19, ll. 22-36; fig. 14: step 1403.
Fidelibus
13. Fidelibus describes an interactive multimedia system that includes a
remote computing device and a user’s local computing device with a
media drive. Col. 3, ll. 24-52; fig 1.
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14. The user places a recorded medium into a media drive and establishes
a communication session with a web server maintained at the remote
computing device. Col. 5, l. 50-col. 6, l. 16.
15. The remote web server transmits a standard web page to the user’s
local computing device to initiate remote interactive access of the
interactive multimedia entertainment system running on the remote
computing device. Col. 6, ll. 16-20.
16. The user views the webpage and via inputs at the local computing
device indicates that a multimedia presentation is desired, identifies
the CD mounted in the media drive and indicates which component on
the CD that the user wishes to have presented in multimedia format.
Col. 6, ll. 21-30.
17. The data input by the user are transmitted from the local computer to
the remote computer where the interactive multimedia system
validates the identity of the CD in the media drive by instructing the
local computing device to scan the CD, including identifying the CD
and/or the locating a particular track. Col. 6, ll. 21-52, Fig. 2A: steps
204, 205.
18. The result of the validation is sent to the remote computing device.
Col. 6, ll. 52-57.
19. If the proper CD is in the media drive, the remote computer transmits
an interactive media system web page that includes a control panel to
the local computer where the user activates the multimedia
presentation by operating one or more control panel icons. Col. 7, ll.
4-22; col. 7, l. 36-col. 8, l. 25.
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20. The interactive multimedia system integrates the multimedia segments
from the remote computer server resulting in a multimedia
presentation defined by the user and includes program materials
retrieved from the local computing device, typically including audio
and/or visual components from the CD mounted in the CD drive. Col.
4, l. 64-col. 5, l. 20.
21. The multimedia entertainment is activated simultaneously with the
audio from the CD in the media drive mounted in the user terminal.
Col. 2, ll. 51-60; col. 7, ll. 36-40.
ANALYSIS
Claim Interpretation
Independent claim 1 recites (disputed limitations in italics): a
“compact, portable and interchangeable computer readable medium
including a plurality of remotely accessible, auxiliary site addresses encoded
therein . . . including select portions of . . . auxiliary site data . . . said
remotely accessible, auxiliary site addresses being structured to be remotely
accessed by said remote server assembly so as to initiate utilization of said
select portions of said quantity of auxiliary site data by said local processor
assembly in conjunction with said primary site data.”
The Examiner and Rothschild disagree about the interpretation to be
given to the highlighted portion immediately above. App. Br. 34. The
Examiner finds that the claim language only requires the remote server to be
in some form involved in the access of auxiliary site addresses and data, and
does not require the remote server to read, have possession of or even
directly control the auxiliary site data or addresses. Ans. 34. The Examiner
explains that “access” could be the remote server sending some information
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that indirectly allows access. Ans. 32. The Examiner also finds that
“remotely accessed” in the context of the other claim limitation “so as to
initiate utilization…of auxiliary site data…by the local processor…”
requires nothing more than “remotely established ability to read or write
data, gain entry to or use data of a system so as to initiate utilization of data
by the local processor”. Ans. 34.
Rothschild argues that the Examiner’s claim interpretation is
unreasonable. Reply Br. 17-18. Specifically, Rothschild disagrees that
“access” could include sending information that indirectly allows access.
Reply Br. 17-18. Rothschild also argues that the Examiner’s claim
interpretation is inconsistent with the Specification which discloses that
“only the remote server assembly [] can access the auxiliary site data at the
auxiliary site addresses.” App. Br. 24, citing col. 13, ll. 59-61.
The Examiner’s interpretation does not take into account the
remaining limitations of claim 1 that require the remotely accessible
auxiliary site addresses to be: (1) encoded on a compact, portable and
interchangeable computer readable medium; and (2) structured to be
remotely accessed by the remote server assembly. Since the language of
claim 1 requires that the encoded auxiliary site addresses are structured to be
accessed by the remote server, we find, according to that claim, that the
addresses are directly accessed by the remote server. The scope of claim 1
does not cover encoded auxiliary site addresses that are structured to be
accessed by a local processor or any other intermediary, ultimately resulting
in the addresses being indirectly accessed by the remote server. Such a
broad interpretation would be unreasonable since the auxiliary site addresses
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are both encoded and structured for the purpose of being accessed by the
remote server.
In addition, broadly interpreting claim 1 to include auxiliary site
addresses that are structured to be accessed by a local processor would not
be consistent with Patentee’s Specification. The Specification discloses that
“the remotely accessible, auxiliary site addresses are specifically encoded so
as to restrict access by the local processor assembly [] unless the access is
directed by the remote server assembly [].” Col. 14, ll. 33-37. For these
reasons, the broadest reasonable interpretation of claim 1 is limited to
remotely accessible auxiliary site addresses encoded on a compact, portable
and interchangeable computer readable medium being structured to be
remotely accessed by the remote server assembly directly.
Mages
The Examiner finds that Mages describes auxiliary site addresses that
are structured to be remotely accessed by a remote server since Mages’ host
computer sends a key to the end-user’s computer, the downloaded key data
are written to local memory addresses which allows data to be read from the
local memory addresses including the CD-ROM; and the end-user’s
computer accesses and uses the local memory addresses along with the
downloaded key data. Ans. 5, 34-35, citing col. 4, ll. 7-17, 47-64; col. 7, l.
21-col. 8, l. 17. The Examiner further finds that the remote server accesses
the addresses by causing the data therein to be manipulated or used. Ans.
34-35. Rothschild argues that Mages does not teach the disputed limitations
but instead teaches that the remote server just sends a key. App. Br. 27.
The Examiner does not direct us to, and we can not find where Mages
describes that the CD-ROM audio/video data (i.e., auxiliary site addresses,
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auxiliary site data) are structured to be remotely accessed by the remote
server (i.e., directly). Instead, Mages describes that the CD-ROM
audio/video data (i.e., auxiliary site addresses, auxiliary site data) are
accessed by the local end-user’s computer (i.e., processor). Specifically,
Mages describes the audio/video data on the CD-ROM (i.e., auxiliary site
addresses, auxiliary site data) are accessed by a player subroutine of a
software program operating on the local end-user’s computer (i.e.,
processor) and passes the CD-ROM video/audio data to a local audio-video
system. Col. 5, l. 64-col. 6, l. 17; col. 7, ll. 21-col. 8, l. 8; fig. 8.
For all these reasons, we do not sustain the rejection of claims 1, 3-4,
6-8, 21, 23 and 26 as anticipated by Mages. Since claim 9 is dependent on
claim 1, for the same reasons we cannot sustain the rejection of claim 9 as
obvious over Mages.
Reisman
The Examiner finds that Reisman teaches auxiliary site addresses that
are structured to be remotely accessed by the remote server because Reisman
describes that a sponsor website or other remote location writes
new/current/additional content to the local computer station and the local
computer station accesses the new/current/additional content in conjunction
with local pages or content stored on a CD. Ans. 10, 38-39, citing col. 41, ll.
15-45; col. 42, ll. 8-53. Rothschild argues that Reisman does not describe
the disputed limitations but instead teaches that the remote server sends a
new content element to the local system. App. Br. 31.
The Examiner does not direct us to, and we can not find, where
Reisman describes that the new/current/additional content (i.e., auxiliary site
addresses) is structured to be remotely accessed by the remote server (i.e.,
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directly). Instead, Reisman describes that the new/current/additional content
elements (i.e., auxiliary site addresses) are accessed by the local computer
(i.e., processor). In particular, Reisman describes the new/current/additional
content elements (i.e., auxiliary site addresses, auxiliary site data) are
retrieved from a remote information source (i.e. remote server) and locally
stored at a local computer station (i.e., local processor) and accessed by an
offline browser operating on the local computer station (i.e., local processor)
and integrated with other local content elements (i.e., primary site data).
Col. 39, l. 54-col. 40, l. 10; col. 41, ll. 15-21.
For all these reasons, we do not sustain the rejection of claims 1, 6-21
and 23 as anticipated by Reisman.
Uranaka
The Examiner finds that Uranaka teaches auxiliary site addresses that
are structured to be remotely accessed by the remote server because Uranaka
describes that a server generated display script for displaying DVD content
is sent to and written to the catalog shopping client which accesses and uses
the script in conjunction with DVD data. Ans. 16, 39-40, citing col. 16, l.
17-col. 18, line 21; fig. 12. Rothschild argues that Uranaka does not
describe the disputed limitations but instead teaches that the remote server
sends a script. App. Br. 33-34.
The Examiner does not direct us to, and we can not find, where
Uranaka describes that the display script (i.e., auxiliary site addresses) is
encoded on a compact, portable and interchangeable computer readable
medium and structured to be remotely accessed by a remote server (i.e.,
directly). As acknowledged by the Examiner (Ans. 16, 39-40), Uranaka
describes that the server generated display script (i.e., auxiliary site
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addresses) is transferred from the remote server to the local catalog shopping
client (i.e., local processor) which uses (i.e., accesses) the display script for
displaying the electronic catalog shopping DVD content (i.e., primary site
data). Col. 19, ll. 6-36.
For all these reasons, we do not sustain the rejection of claims 1, 4 and
6-8 as anticipated by Uranaka.
Fidelibus
The Examiner finds that Fidelibus teaches auxiliary site addresses that
are structured to be remotely accessed by a remote server because Fidelibus
describes a remote server that reads the local computer’s CD data with the
remote server providing data that can be used in conjunction with the local
CD data. Ans. 19, 42, citing col. 4, l. 39-col. 5, l. 20. Rothschild argues that
Fidelibus does not teach the disputed limitations but instead teaches that the
remote server sends a webpage with a control panel. App. Br. 37.
The Examiner does not direct us to, and we can not find, where
Fidelibus describes that the CD data (i.e., auxiliary site addresses) are
structured to be remotely accessed by the remote server (i.e., directly).
Additionally, the Examiner does not direct us to, and we can not find, where
Fidelibus describes that the remote sever reads the CD data as found by the
Examiner. Instead, Fidelibus describes that the local computer reads the CD
data. Specifically, Fidelibus describes that data input by a user regarding the
CD data (i.e., auxiliary site addresses) are transmitted from the local
computer (i.e., processor) to the remote server. Col. 6, ll. 16-34. Thereafter,
the local computer (i.e., processor) is instructed to scan (i.e., access, read)
the CD in the media drive (i.e., auxiliary site addresses) to validate the CD,
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including identifying the CD and/or the locating a particular track. Col. 6, ll.
35-57, Fig. 2A: steps 204, 205.
For all these reasons, we do not sustain the rejection of claims 1 and
3-8 as anticipated by Fidelibus. Independent claim 23 recites identical
limitations to the disputed limitations of claim 1 and the Examiner’s
rationale with respect to the identical limitations is the same. Therefore we
do not sustain the rejection of claim 23 as obvious over Fidelibus for the
same reasons.
DECISION
We REVERSE the rejection of claims 1, 3-4, 6-8, 21, 23 and 26 under
35 U.S.C. § 102(e) as anticipated by Mages.
We REVERSE the rejection of claims 1, 6-21 and 23 under
35 U.S.C. § 102(e) as anticipated by Reisman.
We REVERSE the rejection of claims 1, 4 and 6-8 under
35 U.S.C. § 102(e) as anticipated by Uranaka.
We REVERSE the rejection of claims 1 and 3-8 under
35 U.S.C. § 102(e) as anticipated by Fidelibus.
We REVERSE the rejection of claim 23 under 35 U.S.C. § 103(a) as
unpatentable over Fidelibus.
We REVERSE the rejection claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Mages.
ORDER
REVERSED

Appeal 2010-003273
Reexamination Control 90/008,591
Patent 6,101,534
15
CAREY, RODRIGUEZ, GREENBERG & PAUL LLP
ATTN: STEVEN M. GREENBERG, ESQ.
950 PENINSULA CORPORATE CIRCLE
SUITE 2022
BOCA RATON, FL 33487

Third Party Requester:

Van Mahamedi
Shemwell Mahamedi LLP
4880 Stevens Creek Blvd. Suite 201
San Jose, CA 95129