Ex Parte Cragun et al

Patent Trial and Appeal Board

Mar 29, 2016

12858587 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/858,587 08/18/2010 Brian J. Cragun
46296 7590 03/31/2016
MARTIN & ASSOCIATES, LLC
P.O. BOX548
CARTHAGE, MO 64836-0548
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.
ROC920100040US1 6175
EXAMINER
AGWUMEZIE, CHINEDU CHARLES
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/31/2016 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):
derekm@ideaprotect.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN J. CRAGUN and JOHN E. PETRI
Appeal2013-010895 1
Application 12/858,587
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1, 2, 4--10, 12-16, 18, 19, and 21-25.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify International Business Machines Corp. as the real party
in interest. (Appeal Br. 1 ).
Appeal2013-010895
Application 12/858,587
Appellants' invention relates generally to a system for providing
content to a user. (Spec. para. 2).
Claim 1 is illustrative:
1. An apparatus comprising:
at least one processor;
a memory coupled to the at least one processor;
a browser residing in the memory and executed by the at
least one processor that provides an interface for a user to request
licensed content;
a licensing policy residing in the memory and defined by
the user that specifies at least one criterion for automatically
acquiring at least one license; and
a dynamic licensing mechanism that requests the licensed
content from a content provider in response to the user requesting
the licensed content via the browser, queries the content provider
for license information for the licensed content that specifies at
least one available license for the licensed content, and when the
license information satisfies the at least one criterion in the
licensing policy, the dynamic licensing mechanism acquires a
license for the licensed content without requiring further input
from the user, allowing the user to received the licensed content,
and when the license information does not satisfy the at least one
criterion in the licensing policy, the dynamic licensing
mechanism prompts the user for authorization to acquire the
license for the licensed content.
Appellants appeal the following rejections2 :
Claims 1, 2, 4, 9, 10, 12, 18, 19, and 21 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Erickson (US 2004/0205358 Al, pub. Oct. 14,
2004).
2 We interpret the Examiner's statements as withdrawing the rejection under
35 U.S.C. § 101. (See Answer 11).
2
Appeal2013-010895
Application 12/858,587
Claims 5-8, 13-16, and 22-25 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Erickson and McLean (US 2008/0141378 Al, pub.
June 12, 2008).
ANALYSIS
Rejection under 35 U.S. C. § 102(b)
Each of independent claims 1, 9, and 18 recite language substantially
equivalent to "when the license information satisfies the at least one criterion
in the licensing policy, the dynamic licensing mechanism acquires a license
for the licensed content without requiring further input from the user," as
recited in independent claim 1.
We are persuaded by Appellants' arguments that Erickson fails to
anticipate that claim language. (Appeal Br. 8-12; Reply Br. 4--7). In
rejecting the independent claims, the Examiner relies on paragraphs 82, 149,
and 150 as disclosing this language. (Answer 5---6). In the Response to
argument, the Examiner appears to rely in addition on paragraphs 31, 107,
150, 197, 204, and 213. (Answer 12-13).
Erickson discloses a system that has pre-established licenses for
minimal access permission for documents, where if the user attempts usage
of the documents beyond what is already established in the licenses, the user
is "automatically prompted to obtain a license" for the document. (Para. 82).
However, the "user uses a template-like interface to request auxiliary
permissions." (Para. 149). The user must further accept licensing terms
(para. 204 ), and "must communicate with the server 202 and transact a
license with that server" (para. 213).
3
Appeal2013-010895
Application 12/858,587
Erickson thus discloses that a license is not acquired without user
input, which does not meet the claim language of acquiring a license
"without requiring further input from the user." The Examiner appears to
incorrectly equate using an existing license with acquiring additional license
rights. (See, e.g., Answer 13 - "the user is allowed to render the document
with the minimum permission without further input from the user.")
However, merely relying on the usage rights available to a user on an
existing license for access to a document, does not equate to acquiring a
license, as claimed, without user input, after satisfying a criterion.
For this reason, we do not sustain the rejection of independent claims
1, 9, and 18, or of dependent claims 2, 4, 10, 12, 19, and 21 that were
rejected along with the independent claims.
Rejection under 35 U.S.C. § 103(a)
The Examiner has not established on the record that McLean remedies
the shortcomings we identify with Erickson as to the rejection of
independent claims 1, 9, and 18. Therefore, we do not sustain the rejection
of dependent claims 5-8, 13-16, and 22-25.
DECISION
We reverse the rejections of claims 1, 2, 4--10, 12-16, 18, 19, and 21-
25.
REVERSED
4