Ex Parte Bond

Patent Trial and Appeal Board

Aug 5, 2016

11249201 (P.T.A.B. Aug. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111249,201 10/13/2005
71867 7590 08/09/2016
BANNER & WITCO FF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
FIRST NAMED INVENTOR
Madison E. Bond
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.
007412.00134 3604
EXAMINER
RYAN, PATRICK A
ART UNIT PAPER NUMBER
2427
NOTIFICATION DATE DELIVERY MODE
08/09/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
PTO-71867@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MADISON E. BOND
Appeal2015-002655
Application 11/249,201
Technology Center 2400
Before: JOSEPH L. DIXON, ERIC S. FRAHM, and
SCOTT B. HOWARD, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1, 4--6, 25-31, and 33--40. Claim 32 has been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2015-002655
Application 11/249,201
The claims are directed to a method and system of distributing pre-
released media content. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A method, comprising:
receiving, by at least one computing device, a request for
a pre-released version of media content;
determining, by the at least one computing device,
whether a user has committed to purchasing a copy of the media
content; and
transmitting the pre-released version of the media content
over an electronic network of a media service provider to the user
if the user has committed to purchasing the copy of the media
content, wherein the transmitting of the pre-released version of
the media content over the electronic network to the user is
performed before the media service provider offers limited on
demand or pay-per-view viewing of the media content over the
electronic network and before the media content is available on
DVD for retail purchase.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Rodriguez et al.
Morimoto
DeRose et al.
US 2003/0005454 Al
US 7,035,829 B2
US 7,376,581 B2
Jan.2,2003
Apr. 25, 2006
May 20, 2008
David Waterman, et al., Time Consistency and the Distribution of Theatrical
Films: An Empirical Study of the Video Window, Working paper presented
at the Allied Social Science Associations Annual Meeting, January, 2003
(Revised December 17, 2002) ("Waterman")
Online service to offer movies before DVD, Phys.org, 14 Jul 2005.
http://phys.org/news5179 .html ("Phys.org")
2
Appeal2015-002655
Application 11/249,201
REJECTIONS
The Examiner made the following rejections:
Claims 1, 4, 25-28, 30, 31, and 33 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over DeRose in view of Rodriguez in view of
Phys.org in view of Waterman.
Claims 5, 6, and 29 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of DeRose, Rodriguez, Phys.org, and
Waterman in further view of Morimoto.
ANALYSIS
Appellant argues the claims together (App. Br. 8). As a result, we
select independent claim 1 as the representative claim for the group and
address Appellant's arguments thereto.
With respect to representative independent claim 1, Appellant's main
arguments are directed to the DeRose reference. Appellant contends that the
DeRose reference never shares media content before it is available on a
physical medium. (App. Br. 5). Appellant identifies the various teachings
within the DeRose reference regarding the physical possession of a medium
which is used to rip the content into electronic content separate from the
physical work. (App. Br. 5-7; see generally Reply Br. 1-3).
Appellant also contends that the Examiner's reliance upon the
single disclosure of non-physical possession is not determinative.
Appellant argues:
The Examiner points to col. 16, lines 42-65, in which the user
may be provided access if the user has ordered (but does not yet
possess) the physical work. Even in this case, the user still cannot
possibly access an electronic version of a physical work that is
not yet available for retail purchase, because the electronic
3
Appeal2015-002655
Application 11/249,201
version cannot yet have been ripped and uploaded to the network
until the physical work source is available.
(App. Br. 6). Appellant further argues that the DeRose reference actively
teaches away from and discourages the proposed modification as suggested
by the Phys.org reference. We disagree with Appellant because Appellant
has not identified any express teaching away. Appellant has not established
that DeRose teaches away from the claimed invention and has not
demonstrated that "a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant." In re Gurley, 27 F.3d 551, 553 (Fed Cir. 1994).
Appellant further contends that the proposed reasoning for combining
the DeRose and Phys.org references is erroneous. (App. Br. 7-8).
Appellant further argues "There is no evidence on the record that the
Examiner's proposed weakening of the physical ownership requirement of
DeRose would help combat piracy." (App. Br. 8).
The Examiner maintains that Appellant is attacking references
individually. (Ans. 3). We agree with the Examiner. The Examiner further
maintains:
DeRose is unclear as to the timing of electronic distribution of
content relative to receiving the physical work, such that DeRose
cannot be said to provide only electronic access to media content;
however, it is the Examiner's position that this does not preclude
DeRose from modification. For example, pure electronic access
to media content may not have been feasible at the time of
DeRose's invention.
(Ans. 3).
We agree with the Examiner that at the time of the DeRose system
physical media was the prevalent implementation of content media, but the
4
Appeal2015-002655
Application 11/249,201
Examiner further relies upon the Phys.org reference to teach providing
electronic access to media content prior to distribution of the physical work
by way of releasing films online earlier than their DVD release. (Ans. 3).
The Examiner further maintains that the DeRose and the Phys.org references
teach similar techniques of distributing content at the request of the end user
over a content distribution system providing electronic and physical access
to the content. The Phys.org reference further demonstrates the known
technique of distributing user requested content prior to the content being
available on DVD (in a physical form). (Ans. 3--4). The Examiner further
maintains:
because Phys.org demonstrates the well-known use of providing
media content in pure electronic form online, at the time of
disclosure of Phys.org, a different form a piracy would exist by
way of purely electronic piracy, such that the techniques of
combating piracy in DeRose are different from Phys.org, but the
goal of preventing piracy is the same.
(Ans. 4).
We agree with the Examiner's proffered combination of teachings,
and we do not find the DeRose reference teaches away from a purely
electronic copy of a media work prior to its commercial release.
Consequently, we find Appellant's arguments to be unavailing and do not
show error in the Examiner's conclusion of obviousness of independent
claim 1.
Furthermore, we note that the argued "pre-released version" and
"transmitting of the pre-released version of the media content over the
electronic network to the user is performed before the media service
provider offers limited on demand or pay-per-view viewing of the media
content over the electronic network and before the media content is available
5
Appeal2015-002655
Application 11/249,201
on DVD for retail purchase" limitations do not limit the claimed "method"
or the functional steps recited therein. Appellant's argument regarding the
"pre-release version" does not evidence any difference in the content or
functional usage of the content media to differentiate the media content or
the functional steps of the method.
Additionally, we find the teachings and suggestion of the Phys.org
reference with a pre-DVD release to be suggestive of each of the claimed
method steps of representative independent claim 1. As a result, we sustain
the rejection of representative claim 1 and group claims 4---6, 25-31, and 33-
40, not separately argued with representative claim 1.
CONCLUSION
The Examiner did not err in rejecting representative claim 1 under 35
U.S.C. § 103(a).
DECISION
For the above reasons, we sustain the Examiner's rejections of claims
1, 4--6, 25-31, and 33--40.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
6