Ex Parte Banerjee et al

Board of Patent Appeals and Interferences

Jun 22, 2009

09894108 (B.P.A.I. Jun. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DWIP N. BANERJEE and RABINDRANATH DUTTA
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Appeal 2008-26681
Application 09/894,108
Technology Center 2400
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Decided: June 23, 20092
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Before JEAN R. HOMERE, JOHN A. JEFFERY, and STEPHEN C. SIU,
Administrative Patent Judges.

HOMERE, Administrative Patent Judge.

1 Filed June 28, 2001. The real party in interest is IBM Corp.
2 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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DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1 through 7, 9, 11 through 19, 21 through 40, and 42 through 48.
Claims 8, 10, 20, and 41 have been cancelled. Claim 15 has been deemed to
be allowable if rewritten in independent form to include the limitations of
their respective base claims and any other intervening claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appellants’ Invention
As depicted in Figure 1, Appellants invented a method and system for
managing a subscriber’s access to an online subscription service. (Spec. 2:
24-25.) In particular, the subscriber is provided with full access to online
content during the subscription period. After the subscription period
expires, the subscriber’s access to the online content is gradually reduced
until all access is terminated or full access is restored upon the subscriber
renewing his/her subscription. (Spec. 3: 1-21.)
Illustrative Claim
Independent claim 1 further illustrates the invention. It reads as
follows:
1. A method to be executed by one or more processors for managing
subscriber access to online subscription content comprising:
(a) providing the subscriber with access to the online
subscription service at a first level of service during a
subscription period; and
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(b) after expiration of the subscription period, providing
the subscriber with access to the online subscription service at a
level of service that is lower than the first level of service
during a post-expiration period; and then
(c) terminating subscriber access to the online
subscription service after the post-expiration period unless the
subscription is renewed.

Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Drosset US 6,662,231 Dec. 9, 2003
Nye US 2003/0028548 Feb. 6, 2003
Davis US 2002/0040395 Apr. 4, 2002

Rejections on Appeal3
The Examiner rejected the claims on appeal as follows:
1. Claims 1 through 7, 9, 11 through 14, 33 and 48 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Drosset and Nye.
2. Claims 21, 22, 29 and 46 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Drosset,
Nye, and Davis.

3 The Examiner summarily rejected claims 16 through 19, 23 through 28, 30
through 32, 34 through 40, 42 through 45, and 47 without properly setting
out a statement of rejection that clearly identifies the references relied upon
to reject these claims.
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Appellants’ Contentions
Appellants contend that the combination of Drosset and Nye does not
render the claimed invention unpatentable. (App. Br. 8-10.) According to
Appellants, the proffered combination is limited to downgrading a
subscriber’s membership level from paying to non-paying status. However,
Appellants contend that it does not teach terminating the subscriber’s access
to the online content after the post expiration period of his/her subscription,
as recited in independent claim 1. (Id.)

Examiner’s Findings
The Examiner finds that Drosset’s disclosure of preserving a
subscriber’s information for a period of time after being downgraded from
paying to non-paying status teaches or suggests that when the information is
ultimately deleted, the subscriber’s access is terminated. (Ans. 12.) Further,
the Examiner finds that Nye complements Drosset by disclosing that after
the expiration of a subscriber’s subscription, the subscription is cancelled by
purging the subscriber’s information from the database. (Ans. 12-13.)

II. ISSUE
Have Appellants shown that the Examiner erred in concluding that the
combination of Drosset and Nye renders claim 1 unpatentable? In
particular, the issue turns on whether the cited combination fairly teaches or
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suggests terminating a subscriber’s access to an online subscription content
after a post termination period expires.

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Drosset
1a. Drosset discloses a subscriber-based audio service for providing
audio files access to client devices connected to a server over a
communication network. (Col. 2, ll. 38-41.)
1b. Upon authenticating the subscriber, the server determines
whether the subscriber is a paying or a non-paying member in order to
provide the subscriber with a corresponding level of access to audio file
contents. (Col. 13, ll. 53-62, col. 16, ll. 10-16.)
1c. Drosset discloses that, upon a paying member downgrading
his/her membership to non-paying status, the user’s access is reduced, and
the user’s information is preserved for period of time with the expectation
that the membership will be upgraded back to paying status with full access
privileges. (Col. 15, ll. 41-57.)
Nye
2. Nye discloses a database for managing a subscriber’s
information relating to particular services. When a subscriber cancels
subscription to a service, the subscriber’s name is removed from the list of
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active customers and placed on the list of inactive customers. (P. 4, para.
[0044-0046].)

IV. PRINCIPLES OF LAW
Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

V. ANALYSIS
Independent claim 1 requires, in relevant part, terminating a
subscriber’s access to an online subscription content after a post termination
period expires. As set forth in the Findings of Facts section, Drosset
discloses that, upon downgrading a subscriber’s membership from paying to
non-paying status, the subscriber’s access to online audio file contents is
reduced. (FF. 1a, 1b.) Drosset further discloses that the subscriber’s
information is preserved for a period of time after the subscription lapses to
facilitate the subscriber’s reinstatement to full access upon upgrading the
subscriber’s membership back to paying status. (FF. 1c.)
We agree with the Examiner that Drosset’s disclosure teaches or
suggests that after the post termination period expires, the subscriber’s
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membership information is deleted from the database. However, we do not
agree with the Examiner that such deletion of the subscriber information in
any way teaches or suggests that the user’s access to the online audio files is
terminated. While it is possible that, upon such deletion, the subscriber’s
access to the online content might eventually be terminated, it is not the only
outcome that might ensue therefrom. Beyond the disclosure of reducing the
subscriber’s level of access to the audio file content, Drosset is simply silent
as to what actually happens to the user’s access when the membership
information is deleted. Further, we agree with Appellants that Nye’s
disclosure does not cure these deficiencies. While Nye discloses purging a
subscriber’s information from a database upon canceling a related
subscription (FF. 2), it is, however, silent on whether the subscriber’s access
is also terminated at such time. Therefore, Appellants have shown that the
Examiner erred in concluding that the combination of Drosset and Nye
renders independent claim 1 unpatentable.
Because claims 2 through 7, 9, 11 through 19, 21 through 40, and 42
through 48 recite these same limitations, Appellants have shown error in the
Examiner’s rejection of those claims.

CONCLUSION OF LAW
Appellants have established that the Examiner erred in rejecting
claims 1 through 7, 9, 11 through 19, 21 through 40, and 42 through 48 as
being unpatentable under 35 U.S.C. § 103(a).

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DECISION
We reverse the Examiner's rejection of claims 1 through 7, 9, 11
through 19, 21 through 40, and 42 through 48.
REVERSED

PEB

IBM CORPORATION (SS)
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