Ex Parte Berstis et al

Board of Patent Appeals and Interferences

Sep 27, 2010

11039534 (B.P.A.I. Sep. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VIKTORS BERSTIS and RANDOLPH MICHAEL FORLENZA
____________

Appeal 2009-007722
Application 11/039,534
Technology Center 2100
____________

Before JOHN A. JEFFERY, ST. JOHN COURTENAY III, and JAMES R.
HUGHES, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

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”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Appellants invented a method, medium, server, and system for
determining and aggregating electronic document usage. See generally
Spec. ¶ 0001. Claim 1 is reproduced below with the key disputed limitations
emphasized:
1. A method for determining the usage of an electronic document, the
method comprising:
receiving from a plurality of users an indication of their usage of
the electronic document;
aggregating the usage indications for the electronic document
received from the plurality of users;
creating aggregated document utilization information for the
electronic document, wherein the aggregated document utilization
information is based on the received usage indications from the
plurality of users; and
transmitting an indication of the aggregated document utilization
information to the plurality of users for utilization by document
readers.

The Examiner relies on the following as evidence of unpatentability:
McCurdy US 2002/0035697 A1 Mar. 21, 2002

The Examiner rejected claims 1-23 under 35 U.S.C. § 102(b) as
anticipated by McCurdy. Ans. 3-8.2

CLAIM GROUPING
Appellants argue the following claim groupings separately: (1) claims
1-12 and (2) claims 13-23. See App. Br. 6-10. Accordingly, we select

2 Throughout this opinion, we refer to (1) the Appeal Brief filed March 27,
2008; (2) the Examiner’s Answer mailed June 20, 2008; and (3) the Reply
Brief filed August 19, 2008.
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claims 1 and 13 as representative of each group, respectively. See 37 C.F.R.
§ 41.37(c)(1)(vii).

THE CONTENTIONS
Regarding representative independent claim 1, the Examiner finds that
McCurdy teaches all recited limitations. Ans. 3-4. Specifically, the
Examiner states that McCurdy discloses the user can be multiple users and
therefore receives usage information from multiple users that is aggregated
and transmitted to the users as a magazine usage data log. Ans. 3-4.
Appellants argue that the aggregated magazine usage data is transmitted to a
publisher or entities other than the claimed users from where the usage
information was received. App. Br. 6-7; Reply Br. 6-7. Appellants also
assert that McCurdy only creates a personal log of magazine usage and
therefore no aggregated document utilization information of all the users is
transmitted to the users as recited. App. Br. 7; Reply Br. 6-7.
As for representative independent claim 13, the Examiner relies on the
discussion of claim 1, and adds McCurdy teaches the electronic document is
displayed to the user. Ans. 6. Appellants repeat that McCurdy discloses the
magazine usage data is made available to publishers, but fails to teach the
first user receives aggregated document utilization information as recited.
App. Br. 8; Reply Br. 7. Appellants also repeat that McCurdy’s log is
personal and therefore (1) not based on users’ usage other than the personal
user, and (2) fails to display aggregated document utilization information to
the first user. App. Br. 9.

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The issues before us, then, are as follows:

ISSUES
Under § 102, has the Examiner erred by finding that McCurdy
discloses:
(1) transmitting an indication of the aggregated document utilization
information to multiple users as recited in claim 1?
(2) receiving aggregated document utilization information for an
electronic document as recited in claim 13?
(3) displaying an indication of the aggregated document utilization
information to the first user as recited in claim 13?

FINDINGS OF FACT
1. McCurdy discloses a system 50 that allow users to read
magazines through a reader 78 called a “newsstand.” The reader 78 tracks
usage (step 180), including: (a) which articles were browsed, read, and
skipped; (b) how long a user spent on an article; and (c) whether a user
passes a file along to another client. The user also is “free to view the log of
magazine usage data.” McCurdy, ¶¶ 0013, 0031, 0114, 0116; Figs. 2, 4.
2. McCurdy states that the reader 78 does not record personal
identifiable information as part of the magazine usage data in at least one
embodiment. McCurdy, ¶ 0116.
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3. McCurdy states that the term “user” in system 503 in some
embodiments can be a group of users (e.g., situations where there is group or
corporate access). McCurdy, ¶ 0131; Fig. 2.
4. McCurdy’s usage logs are aggregated in the magazine usage
database 72 by magazine usage service 74, and the publisher can correlate
the data. Magazine usage data can be provided to advertisers and publishers
in a variety of forms. McCurdy, ¶¶ 0303, 0322-25; Fig. 2.
5. McCurdy permits a user to read a magazine article, annotate the
article (e.g., notes/dog-ear 86), and share (e.g., clip articles 84) content with
other users. A user passing along a file to another client is tracked usage
information. McCurdy, ¶¶ 0209, 0213, 222; Fig. 3.
6. McCurdy discloses that articles can be passed along to other user
(e.g., tear-out feature 2040). Annotations (e.g., notes) can be viewed by the
others. Additionally, the next user can make annotations, and old and new
annotations are saved. McCurdy, ¶¶ 0103, 0118, 0200, 0269-71, 0274; Fig.
14.
7. McCurdy discloses a database 64 maintains a pass-along
aggregate count to enforce a pass-along limit. When a pass-along request is
received, the pass-along service 68 compares an existing aggregate count

3 Although McCurdy denotes the “system” with numeral 40 in Paragraph
0131, this reference numeral is not shown in any figure. Additionally, every
other paragraph in McCurdy refers to the “system" using reference numeral
50. See, e.g., ¶¶ 0088, 0099, 0110, 0125, 0269, 0321. We therefore
presume that the reference to “system 40” in Paragraph 0131 was intended
to refer to system 50.
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limit with the cycle count limit in the pass-along database 70 (step 1610). If
the limit has been reached, a message will be returned to the pass-along
requested (step 1655). McCurdy, ¶ 0272, 0275, 0286; Figs. 2, 10.

PRINCIPLES OF LAW
All claim limitations must be considered when determining
patentability. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983).
However, the Examiner does not need to give patentable weight to
nonfunctional descriptive material absent a new and unobvious functional
relationship between the descriptive material and the substrate. In re Ngai,
367 F.3d 1336, 1339 (Fed. Cir. 2004); Gulack, 703 F.2d at 1385.

Claims 1-12
ANALYSIS
We begin by construing the limitations of claim 1 which calls for, in
pertinent part, (1) creating aggregated document utilization information for
the electronic document, and (2) transmitting an indication of the aggregated
document utilization information to the users. Merely reciting what data or
information represents (e.g., “aggregated document utilization information”)
constitutes non-functional descriptive material as these limitations do not
further limit the claimed invention functionally. In short, no functional
relationship exists between the creating or transmitting step and the
information (i.e. the document utilization information) such that the claimed
creating and transmitting steps have been given a property the steps would
not have had if either the steps or the information changed.
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Such non-functional descriptive material does not patentably
distinguish over prior art that otherwise renders the claims unpatentable. See
Ngai, 367 F.3d at 1339; see also Ex parte Nehls, 88 USPQ2d 1883, 1887-89
(BPAI 2008) (precedential) (discussing cases pertaining to non-functional
descriptive material). Since the limitation to “document utilization
information” is non-functional descriptive material, the recitation fails to
distinguish patentably over McCurdy.
Nonetheless, even if we were to give this limitation weight, we still
find that McCurdy discloses the claimed invention. McCurdy discloses a
system that allows users to read magazines and uses a reader 78 to track and
record usage, such as whether an article was browsed and how long a user
spent on an article. FF 1. McCurdy therefore receives from a user usage
information about an electronic document (e.g., whether the article was
browsed, how long a user spent on an article). The user also can view a log
of magazine usage data. Id. McCurdy therefore also discloses creating
aggregated utilization information for a document (e.g., log of usage
information related to an article) that is transmitted to the user when the user
views the log.
Notably, McCurdy discusses a “user” when addressing the magazine
usage data log and the reader 78 that tracks and records usage. Based on
this, as Appellants argue (App. Br. 7), McCurdy fails to receive information
from—and transmit information to—plural users as claim 1 requires.
Notably, however, the term “user” in McCurdy’s system can be multiple
users. See FF 3. In this case, McCurdy tracks multiple users’ actions
through the reader 78 and permits all users in the group to view the
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magazine usage data log. See id. McCurdy therefore discloses an
embodiment where the viewable magazine usage log does not just contain
information about a single user, but multiple users in a group.
For example, each user in a group could use the same reader 78 to
view magazines (e.g., use a specific terminal for this purpose). In this
scenario, McCurdy discloses receiving usage information from multiple
users (e.g., an article was read by different users), aggregating the usage
indication information received from the users by creating a log or
aggregating information about the users, and transmitting the information
indication (e.g., the log) to the users for viewing. See FF 1, 3. Moreover, by
stripping privacy information from this log (FF 2), McCurdy all but
confirms the log can be viewed by the multiple users. We therefore find that
McCurdy discloses the transmitting step in claim 1.
Regardless of whether this usage information for users is also
aggregated and sent to publishers (FF 4; App. Br. 7), we find that McCurdy,
as explained above, discloses a scenario where the usage log contains
information about multiple users and is transmitted to multiple users.
Additionally, the limitation “for utilization by document readers” is an
intended use limitation requiring that the transmitting step is only capable of
being used for use by document readers. See In re Swinehart, 439 F.2d 210,
213 (CCPA 1971). While McCurdy only shows a single reader, we find that
McCurdy’s transmission step can involve multiple readers without
destroying its principle of operation and is therefore capable of being used
by document readers.

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The Examiner further notes the usage indication can include when the
user passes a file along to other users. See Ans. 3-4. McCurdy notes that a
user can annotate the article, and then pass the annotated article to another
user who can then annotate the article. See FF 5-6. This serial document
review and transfer process would permit other users to further view and
annotate the article, thereby creating an aggregated document containing
both the old and new annotations (i.e., document utilization information).
Additionally, Figure 10 shows that the number of pass-alongs may be
limited and each user attempting to read a pass along article will be notified
if the copy limit has been reached. See FF 7. McCurdy therefore discloses
(1) receiving usage indication of a document from multiple users (e.g., how
many times an article was passed along) (2) aggregating the usage (e.g.,
using a counter to determine a pass-along number); (3) creating aggregated
information (e.g., pass-along number); and (4) transmitting an indication of
the aggregated information to the user (e.g., each user attempting read pass-
along article will be notified if the limit has been met). See id.
We therefore find that McCurdy discloses various scenarios of
transmitting an indication of the aggregated document utilization
information to the multiple users as recited in claim 1.
For the foregoing reasons, Appellants have not shown error in the
anticipation rejection of independent claim 1 based on McCurdy. We
therefore sustain the rejection of claim 1, and claims 2-12 which fall with
claim 1.

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Claims 13-23
ANALYSIS
Appellants contend that McCurdy fails to disclose receiving
aggregated document utilization information for an electronic document.
We note that Appellants’ arguments focus once again on McCurdy’s
magazine usage data log being a personal log and not that of multiple users.
App. Br. 8-9. We disagree for the above reasons and refer to our previous
discussion. We additionally note that, like claim 1, claim 13 includes non-
functional descriptive material (e.g., document utilization information) that
fails to patentably distinguish over McCurdy. Finally, claim 13 only
requires displaying an aggregated information indication to a first user and
not multiple users. Because the log contains usage information of the group
of users (see FF 1, 3), McCurdy discloses displaying aggregated utilization
information to a first user when the first user chooses to view the log. We
therefore are not persuaded by Appellants’ contentions (App. Br. 9) that
McCurdy does not display an indication of the aggregated document
utilization information to the first user as recited in claim 13.
For the foregoing reasons, Appellants have not shown error in the
anticipation rejection of independent claim 13 based on McCurdy. We
therefore sustain the rejection of claim 13, and claims 14-23 which fall with
claim 13.

CONCLUSION
The Examiner did not err in rejecting claims 1-23 under § 102.

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ORDER
The Examiner’s decision rejecting claims 1-23 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)(1)(iv).

AFFIRMED

pgc

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