Ex Parte Dionne

Board of Patent Appeals and Interferences

Aug 21, 2012

11205696 (B.P.A.I. Aug. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MARK S. DIONNE
____________________

Appeal 2011-003995
Application 11/205,696
Technology Center 3600
____________________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and NINA L.
MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-003995
Application 11/205,696

2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-35. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We REVERSE.1

BACKGROUND
Appellant’s invention is directed to a method for unlocking digital
content embodied in digital readable form on a digital media carrier. The
digital content is unlocked to provide a text-based searchable file after
physical possession of a printed, physical copy of the document is
demonstrated (Spec., page 2, line 25 through page 4, line 11).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A computer implemented method for unlocking digital
content embodied in digital readable form on a digital media
carrier, the method comprises:
transmitting, from a computer, a test to indicate a page to
scan;
receiving, by the computer, a scanned image of the page
from scanning a physical copy of a printed publication
associated with the digital content;
evaluating in the computer the scanned image; and
unlocking the digital content.

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed July 28, 2010) and the Examiner’s Answer (“Ans.,” mailed Oct. 6,
2010).
Appeal 2011-003995
Application 11/205,696

3
THE REJECTIONS
The following rejections are before us for review:2
Claims 1-15 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
Claims 1-35 stand rejected as being indefinite under 35 U.S.C. § 112,
second paragraph.
Claims 1, 4, 5, 7, 9, 10, 16, 19, 20, 22, 28, 31, and 32 stand rejected
under 35 U.S.C § 103(a) as being unpatentable over Ratcliff
(US 2002/0143875 A1, pub. Oct. 3, 2002) in view of Carroni (US
2004/0096063 A1, pub. May 20, 2004).
Claims 2-3, 6, 17-18, and 29-30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Ratcliff and Carroni
in view of Bresler (US 7,239,747 B2, iss. Jul. 3, 2007).
Claims 8 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Ratcliff and Carroni in view of
Bargeron (US 2005/0165747 A1, pub. Jul. 28, 2005).
Claims 11, 23, and 33 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over the combination of Ratcliff and Carroni in view of Wan
(US 2006/0200356 A1, pub. Sep. 7, 2006).
Claim 12 stands rejected under 35 U.S.C § 103(a) as being
unpatentable over the combination of Ratcliff, Carroni, and Wan in view of

2 Claims 13 and 25 are not among the claims that stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Ratcliff in view of Carroni (see
App. Br. 6 and Ans. 2 and 9). Nonetheless, the Examiner addresses these
claims in that context (Ans. 12).
Appeal 2011-003995
Application 11/205,696

4
Finke-Anlauff (US 2005/0187943 A1, pub. Aug. 25, 2005) and in further
view of Kurzweil (US 6,199,042 B1, iss. Mar. 1, 2001).
Claims 14, 26, and 35 stand rejected under 35 U.S.C § 103(a) as being
unpatentable over the combination of Ratcliff and Carroni in view of
Kurzweil.
Claims 15, 24, 27, and 34 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over the combination of Ratcliff and Carroni in view of
Finke-Anlauff, and further in view of Kurzweil.

FINDINGS OF FACT
We find that the following findings of fact (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office). Additional findings of fact may appear in
the Analysis below.
FF1. Ratcliff is directed to a method and apparatus by which a user
may electronically share a printed publication, for example, a magazine or
newspaper article, with a second user, i.e., a designated recipient. Ratcliff
describes that the user operates a handheld device, which may be provided
with a scanning mechanism, to capture information, e.g., title, author,
publication name, from the document. This information is stored in the
handheld device as document data, and is sent to a data processing apparatus
through a communication link between the data processing apparatus and the
handheld device. At least a portion of the document data is extracted as
scanning data and compared with reference data associated with a plurality
Appeal 2011-003995
Application 11/205,696

5
of reference documents. When the scanning data matches at least a portion
of the reference data of one of the reference documents, the reference
document is selected and forwarded to the designated recipient (Abstr.).
FF2. Carroni discloses a group key management scheme for
admission control (Abstr.). In order to verify membership in the group, a
party must provide proof of possession of a key (para. [0044]).
FF3. Paragraph [0044] of Carroni reads:
The method further involves the step 30 of providing
proof of possession of key 121 to verify membership of the
group 160. The providing proof of possession of the key 121
may be done explicitly by showing the key 121 to another
member of the group 160 and/or to an admission control facility
100. An alternative for providing proof of possession of the
key 121 involves receiving a challenge and replying to the
challenge. An example of this alternative is appending the key
to a received message and returning a message. A further
example is processing and returning a message through a one-
way function using the key 121. Providing proof of possession
of the key 121 may also be done implicitly by peers, such as
Party A 170 and Party B 180 negotiating a common key for
communications then hashing the common key together with
the key 121. The hashing may be done at any time, including
the beginning of negotiations and the end of negotiations.

FF4. Carroni at [0044] does not disclose or suggest providing
proof of possession of a physical copy corresponding to locked digital
content or a test related to scanning a portion of the physical copy.

Appeal 2011-003995
Application 11/205,696

6
ANALYSIS
Non-Statutory Subject Matter
Appellant argues claims 1-15 as a group (Br. 9). We select claim 1 as
representative of this group of claims. The remaining claims stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appellant argues that the rejection of claim 1 under 35 U.S.C. § 101 is
improper because the claim is tied to a particular machine (Br. 9-11). In
contrast, referencing the machine-or-transformation test, the Examiner
maintains that the rejection is proper because the recitation of a computer is
“extra-solution activity” in the context of the claim and the method steps do
not transform the underlying subject matter to a different state or thing (Ans.
8-9 and 24).
The Supreme Court clarified in Bilski that the machine-or-
transformation test “is not the sole test for deciding whether an invention is a
patent-eligible ‘process’ under § 101.” Yet the Court explained that this test
remains a “useful and important clue or investigative tool.” See Bilski v.
Kappos, 130 S. Ct. 3218, 3221 (2010).
We are persuaded of error on the part of the Examiner by Appellant’s
argument that the transmitting, receiving, and evaluating steps in claim 1
explicitly require the use of a computer and, therefore, tie the claim to a
particular machine (Br. 10-11). Although the Examiner concludes that these
steps constitute extra-solution activity, the Examiner provides no analysis,
e.g., regarding why these steps constitute extra-solution activity, to support
his position (Ans. 8-9 and 24). In fact, these steps actually constitute the
Appeal 2011-003995
Application 11/205,696

7
fundamentals of the involved process, so to find that they are extra to the
solution is a misnomer.
We, of course, are mindful that the machine-or-transformation test is
not determinative of whether an invention is a patent-eligible process.
However, we find no factors in the record that would weigh against patent
eligibility. For example, claim 1 does not recite purely mental steps, i.e.,
steps that can be performed in the human mind. The claim also does not
merely describe an abstract idea or concept as it recites transmitting and
receiving steps using a computer with a scanned image in the method to
unlock the digital content and these steps are not insignificant extra-solution
activity.
For these reasons, we conclude that claim 1 is directed to patent-
eligible subject matter. Therefore, we will not sustain the Examiner’s
rejection of claims 1-15 under 35 U.S.C. § 101.

Indefiniteness
Appellant argues claims 1-35 as a group (Br. 11). We select claim 1
as representative of this group of claims. The remaining claims stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
The rejection under 35 U.S.C. § 112, second paragraph concerns the
“transmitting, from a computer” and “receiving, by the computer” steps
recited in claim 1. The Examiner maintains that a person of ordinary skill in
the art would not be reasonably apprised of the scope of the invention
because the claim is silent regarding where the computer is transmitting to
and where the computer receiving from; therefore, the Examiner concludes
Appeal 2011-003995
Application 11/205,696

8
that claim 1 is indefinite within the meaning of § 112, second paragraph
(Ans. 9 and 24-25).
We disagree. The test for definiteness under 35 U.S.C. § 112, second
paragraph is whether “those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)
(citations omitted). Claims must “particularly point[] out and distinctly
claim[] the subject matter which the applicant regards as his invention.” 35
U.S.C. § 112, ¶ 2. Only claims “not amenable to construction or insolubly
ambiguous are indefinite.” Star Sci., Inc. v. R.J. Reynolds Tobacco Co., 537
F.3d 1357, 1371 (Fed. Cir. 2008) (citations and quotation marks omitted).
Here, we agree with Appellant that one of ordinary skill in the art
would understand what is claimed when claim 1 is read in light of the
specification. The lack of a recitation in claim 1 regarding where the
computer is “transmitting to and receiving from” may well affect claim
breadth. But it does not render the claim “insolubly ambiguous” or
otherwise indefinite. Therefore, the Examiner’s rejection of claims 1-35
under 35 U.S.C. § 112, second paragraph is not sustained.

Obviousness
Claims 1, 10, 16, 22, and 28
Appellant argues claims 1, 10, 16, 22, and 28 as a group (Br. 13). We
select claim 1 as representative of this group of claims. The remaining
claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2011-003995
Application 11/205,696

9
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting claims 1, 10, 16, 22, and 28 as unpatentable under 35 U.S.C.
§ 103(a) over Ratcliff and Carroni. In particular, we agree with Appellant
that the combination of Ratcliff and Carroni does not teach “transmitting,
from a computer, a test to indicate a page to scan,” as recited in claim 1.
It is incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. As the Supreme Court noted in
KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness. Id. at 418.
Here, the Examiner acknowledges that neither Ratcliff nor Carroni
expressly teaches “transmitting, from a computer, a test to indicate a page to
scan.” (Ans. 10). Directing our attention to paragraph [0044] of Carroni, the
Examiner asserts that “receiving a challenge,” as described in Carroni, may
include, for example, receiving a test to indicate a page to scan and that
“appending the key to a received message” may include, for example,
transmitting a scanned image. According to the Examiner, “a predictable
result of Carroni would have been to transfer a test to indicate a page to scan
because it is common to exchange/transfer documents between parties, in an
attempt to authenticate them” and also common for a challenge to take the
form of transferring documents (e.g., scanned or faxed) between parties
(Ans. 10-11).
Paragraph [0044] of Carroni, on which the Examiner relies, discloses
challenging a party to provide proof of possession of a key, which challenge
Appeal 2011-003995
Application 11/205,696

10
can be met by “appending the key to a received message and returning the
message.” However, Carroni does not disclose or suggest providing proof of
possession of a physical copy corresponding to locked digital content or a
test related to scanning a portion of the physical copy (FF4). Indeed,
Carroni at [0044] does not contemplate scanning at all. Carroni at [0044]
also is silent regarding the nature of the “received message” and how the
“key” is appended to that message.
We agree with Appellant that the Examiner has impermissibly applied
hindsight reconstruction to modify Carroni and combine the modified
Carroni with Ratcliff. Here, there is no articulated reasoning with rational
underpinnings to modify the prior art to use the challenge of providing a key
to specifically require a test to indicate a page to scan without impermissible
hindsight.
We are persuaded that the Examiner erred in rejecting claims 1, 10,
16, 22, and 28 as unpatentable under 35 U.S.C. § 103(a) in view of the
combination of Ratcliff and Carroni; therefore, we will not sustain the
rejection.
Dependent Claims 2-9, 11-15, 17-21, 23-27, and 29-35
Claims 2-9, 11-15, 17-21, 23-27, and 29-35 depend, directly or
indirectly, from claims 1, 16, and 28. For the same reasons outlined above
with respect to claims 1, 16, and 28, we will not sustain the rejections of
claims 2-9, 11-15, 17-21, 23-27, and 29-35 under 35 U.S.C. § 103(a). Cf. In
re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious.”).
Appeal 2011-003995
Application 11/205,696

11
DECISION
The Examiner’s rejection of claims 1-15 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter is reversed.
The Examiner’s rejection of claims 1-35 under 35 U.S.C. § 112, ¶2 as
indefinite is reversed.
The Examiner’s rejections of claims 1-35 under 35 U.S.C § 103(a) are
reversed.

REVERSED

hh