Ex Parte FOTH et al

Board of Patent Appeals and Interferences

Jun 11, 2009

09474326 (B.P.A.I. Jun. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte THOMAS J. FOTH 8
and 9
BRIAN M. ROMANSKY 10
___________ 11
12
Appeal 2009-000331 13
Application 09/474,326 14
Technology Center 3600 15
___________ 16
17
Decided:1 June 12, 2009 18
___________ 19
20
Before HUBERT C. LORIN, ANTON W. FETTING, and 21
BIBHU R. MOHANTY, Administrative Patent Judges. 22
23
FETTING, Administrative Patent Judge. 24
25
26
DECISION ON APPEAL27

1 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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Application 09/474,326

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STATEMENT OF THE CASE 1
Thomas J. Foth and Brian M. Romansky (Appellants) seek review 2
under 35 U.S.C. § 134 of a final rejection of claims 1-8, the only claims 3
pending in the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
We AFFIRM-IN-PART. 7
The Appellants invented an improvement in online transactions by 8
inputting into the computer a digital content file of the merchant. This 9
digital content file includes a header with information related to purchasing a 10
digital content product and the digital content product in encoded form. The 11
computer reads the downloaded header and displays some of the information 12
related to purchasing the digital content product while concurrently 13
downloading the encoded digital content product into the computer. 14
(Specification 4:Summary of the Invention). 15
An understanding of the invention can be derived from a reading of 16
exemplary claim 1, which is reproduced below [bracketed matter and some 17
paragraphing added]. 18
1. A method for using a computer to facilitate a transaction 19
between a merchant and a buyer, the method comprising the 20
steps of: 21
[1] downloading into the computer 22
a digital content file of the merchant, the digital content 23
file including 24
a header with information related to purchasing a 25
digital content product and 26
the digital content product in encoded form; and 27
[2] using the computer for 28
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reading the downloaded header and 1
displaying at least some of the information related to 2
purchasing the digital content product 3
while concurrently downloading the encoded digital 4
content product into the computer. 5
This appeal arises from the Examiner’s Final Rejection, mailed May 6
25, 2005. The Appellants filed an Appeal Brief in support of the appeal on 7
October 24, 2005. An Examiner’s Answer to the Appeal Brief was mailed 8
on April 19, 2007. A Reply Brief was filed on May 4, 2007. 9
10
PRIOR ART 11
The Examiner relies upon the following prior art: 12
Krishnan US 6,073,124 Jun. 6, 2000 13
14
REJECTION 15
Claims 1-8 stand rejected under 35 U.S.C. § 102(e) as anticipated by 16
Krishnan. 17
18
ISSUES 19
The issue of whether the Appellants have sustained their burden of 20
showing that the Examiner erred in rejecting claims 1-8 under 35 U.S.C. § 21
102(e) as anticipated by Krishnan turns on whether Krishnan describes 22
downloading concurrent with display of information, a broker computer 23
identifying and encrypting files at the content server, and the content being 24
dynamically encrypted during download. 25
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FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Krishnan 4
01. Krishnan is directed to facilitating the purchase and delivery of 5
electronic content using a secure digital commerce system, 6
comprised of a plurality of modularized components, which 7
communicate with each other to download, license, and 8
potentially purchase a requested item of merchandise (Krishnan 9
4:11-19). 10
02. Krishnan’s secure digital commerce system ("DCS") includes a 11
DCS client and a DCS server. The DCS client includes client 12
components, which are downloaded by a boot program onto a 13
customer computer system in response to requesting an item of 14
merchandise to be licensed or purchased. The downloaded client 15
components include a secured (e.g., encrypted) content file that 16
corresponds to the content of the requested item and licensing 17
code that is automatically executed to ensure that the item of 18
merchandise is properly licensed before a customer is permitted to 19
operate it. The DCS server includes a content supplier server, 20
which provides the DCS client components that are specific to the 21
requested item, and a licensing and purchasing broker, which 22
generates and returns a secure electronic licensing certificate in 23
response to a request to license the requested item of merchandise. 24
The generated electronic license certificate contains licensing 25
parameters that dictate whether the merchandise is permitted to be 26
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executed. Thus, once properly licensed, the downloaded client 1
components in conjunction with the electronic license certificate 2
permit a legitimate customer to execute (process) purchased 3
content in a manner that helps prevent illegitimate piracy 4
(Krishnan 4:21-44). 5
03. Krishnan’s virtual store provides a set of icons, which each 6
describe an item of merchandise that can be purchased. Each icon 7
is typically linked to a server site on the network, which is 8
responsible for supplying the content of the item. When the user 9
selects one of the icons, the browser application, as a result of 10
processing the link, sends a request for the selected item to the 11
server site. The merchandise that can be licensed and distributed 12
online includes any type of digital or electronic, information or 13
data that can be transmitted using any means for communicating 14
and delivering such data over a network (Krishnan 6:57-7:10). 15
04. Krishnan describes what happens when the customer selects a 16
merchandise icon. The customer is queried whether to download 17
and store or download and execute the anchor file. When the user 18
indicates that the download file is to be executed, the extraction 19
code of the download file is executed, which causes the 20
component list to be extracted and the boot program executable to 21
be potentially decompressed, extracted and executed (Krishnan 22
15:63-16:3). 23
Facts Related To The Level Of Skill In The Art 24
05. Neither the Examiner nor the Appellants has addressed the level 25
of ordinary skill in the pertinent arts of systems analysis and 26
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programming, digital product sales and delivery systems, and on 1
line sales systems. We will therefore consider the cited prior art 2
as representative of the level of ordinary skill in the art. See 3
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) 4
(“[T]he absence of specific findings on the level of skill in the art 5
does not give rise to reversible error ‘where the prior art itself 6
reflects an appropriate level and a need for testimony is not 7
shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys. 8
Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). 9
10
PRINCIPLES OF LAW 11
Claim Construction 12
During examination of a patent application, pending claims are 13
given their broadest reasonable construction consistent with the 14
specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In 15
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). 16
Limitations appearing in the specification but not recited in the claim 17
are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 18
1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view of the 19
specification” without importing limitations from the specification into the 20
claims unnecessarily). 21
Although a patent applicant is entitled to be his or her own 22
lexicographer of patent claim terms, in ex parte prosecution it must be 23
within limits. In re Corr, 347 F.2d 578, 580 (CCPA 1965). The applicant 24
must do so by placing such definitions in the specification with sufficient 25
clarity to provide a person of ordinary skill in the art with clear and precise 26
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notice of the meaning that is to be construed. See also In re Paulsen, 30 1
F.3d 1475, 1480 (Fed. Cir. 1994) (although an inventor is free to define the 2
specific terms used to describe the invention, this must be done with 3
reasonable clarity, deliberateness, and precision; where an inventor chooses 4
to give terms uncommon meanings, the inventor must set out any 5
uncommon definition in some manner within the patent disclosure so as to 6
give one of ordinary skill in the art notice of the change). 7
8
Anticipation 9
"A claim is anticipated only if each and every element as set forth in 10
the claim is found, either expressly or inherently described, in a single prior 11
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 12
628, 631 (Fed. Cir. 1987). "When a claim covers several structures or 13
compositions, either generically or as alternatives, the claim is deemed 14
anticipated if any of the structures or compositions within the scope of the 15
claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351 (Fed. 16
Cir. 2001). "The identical invention must be shown in as complete detail as 17
is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 18
1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by 19
the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology 20
is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). 21
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ANALYSIS 1
Claims 1-8 rejected under 35 U.S.C. § 102(e) as anticipated by Krishnan. 2
The Appellants argue claims 1-3 and 8 as a group. Accordingly, we 3
select claim 8 as representative of the group. 37 C.F.R. § 41.37(c)(1)(vii) 4
(2008). 5
The Examiner found that Krishnan anticipated claim 1 (Answer 3-4: 6
Claim Chart). The Appellants contend that Krishnan fails to describe the 7
concurrent displaying of purchasing information with the downloading of 8
encoded digital content (Br. 4: Last full ¶). The Appellants’ contention is 9
that there is no discussion in Krishnan of such concurrent downloading. 10
Thus the issue is whether Krishnan’s system does in fact perform the 11
concurrent downloading as claimed. 12
We disagree with the Appellants. As the Examiner pointed out in the 13
claim chart, Krishnan displays an icon that displays information regarding 14
what is purchased concurrent with downloading the components of the 15
purchased file. The contents of the download are encrypted (FF 01-04). 16
The Appellants next argue claims 4-6 using claim 4 as exemplary. 17
Claim 4 is: 18
A method for using a computer by a broker to encrypt digital 19
content product files of a merchant that are hosted at a merchant 20
web site, the method comprising the steps of: 21
inputting into the computer an identification of the digital 22
content product files designated for encryption together with 23
the web site location of the digital content product files and 24
information required to access the digital content product files; 25
via the computer, connecting to the web site and accessing and 26
encrypting the digital content product files designated for 27
encryption; and 28
storing the encrypted digital content product files at the web 29
site. 30
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The Appellants argue there is no discussion of a broker computer 1
identifying and encrypting files at the content server (Br. 6:Top ¶). We 2
agree with the Appellants. The Examiner cites the same portions as with 3
claim 1. These portions describe purchase of such files, not the loading of 4
those files. Claim 6 is a method claim, so it is not sufficient merely to show 5
that the same end result is achieved; the same steps must be performed for 6
anticipation. The Examiner has not shown such steps. 7
The Appellants next argue claim 7. Claim 7 is: 8
A method for distributing from a first computer digital content 9
products for purchase, the method comprising the steps of: 10
encrypting a first digital content product file; 11
statically storing the encrypted first digital content product file 12
at the first computer; 13
storing a second digital content product file in unencrypted 14
form at the first computer; and 15
inputting a request into the first computer for downloading from 16
the first computer to a second computer at least one of the 17
encrypted first digital content product file and the second digital 18
content product file; 19
wherein at times when the request is for the encrypted first 20
digital content product file downloading the encrypted first 21
digital content file to the second computer, and at times when 22
the request is for the second digital content product file 23
dynamically encrypting the second digital content product file 24
and sending the second digital content product file in encrypted 25
form to the second computer while maintaining the storing of 26
the second digital content product file in unencrypted form at 27
the first computer. 28
The Appellants argue Krishnan does not describe the content is 29
dynamically encrypted during download (Br. 6:Bottom ¶). We agree with 30
the Appellants. Again, the Examiner cites the same portions as with claim 1. 31
These portions describe purchase of such files, not the encrypting of those 32
files. Claim 7 is a method claim, so it is not sufficient merely to show that 33
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the same end result is achieved; the same steps must be performed for 1
anticipation. The Examiner has not shown such steps. 2
3
CONCLUSIONS OF LAW 4
The Appellants have not sustained their burden of showing that the 5
Examiner erred in rejecting claims 1-3 and 8 under 35 U.S.C. § 102(e) as 6
anticipated by Krishnan. 7
The Appellants have sustained their burden of showing that the 8
Examiner erred in rejecting claims 4-7 under 35 U.S.C. § 102(e) as 9
anticipated by Krishnan. 10
11
DECISION 12
To summarize, our decision is as follows: 13
• The rejection of claims 1-3 and 8 under 35 U.S.C. § 102(e) as 14
anticipated by Krishnan is sustained. 15
• The rejection of claims 4-7 under 35 U.S.C. § 102(e) as anticipated by 16
Krishnan is not sustained. 17
No time period for taking any subsequent action in connection with 18
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). 19
20
AFFIRMED-IN-PART 21
22
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hh 1
2
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PITNEY BOWES INC. 4
35 WATERVIEW DRIVE 5
MSC 26-22 6
SHELTON, CT 06484-3000 7