Ex Parte Gardner

Board of Patent Appeals and Interferences

Sep 22, 2010

11457984 (B.P.A.I. Sep. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/457,984 07/17/2006 Gary Gardner HGNOT.0102 8071
22858 7590 09/22/2010
CARSTENS & CAHOON, LLP
13760 NOEL ROAD, SUITE 900
DALLAS, TX 75240
EXAMINER
OBEID, FAHD A
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
09/22/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte GARY GARDNER 8
___________ 9
10
Appeal 2009-013417 11
Application 11/457,984 12
Technology Center 3600 13
___________ 14
15
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 16
JOSEPH A. FISCHETTI, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge. 18
DECISION ON APPEAL1 19
20

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.
Appeal 2009-013417
Application 11/457,984

2
STATEMENT OF THE CASE 1
Gary Gardner (Appellant) seeks review under 35 U.S.C. § 134 (2002) of 2
a final rejection of claims 1-15, the only claims pending in the application on 3
appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION2 7
We AFFIRM. 8
THE INVENTION 9
The Appellant invented a method for calculating appropriate 10
commissions for parties within a supply chain who are responsible for 11
bringing an item from the manufacturer to the end customer. Specification: 12
2. 13
An understanding of the invention can be derived from a reading of 14
exemplary claim 1, which is reproduced below [bracketed matter and some 15
paragraphing added]. 16
1. A method for distributing-merchandise, the method 17
comprising the following computer implemented steps: 18
(a) assigning a unique identifier to a product; 19

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed October 2, 2008) and Reply Brief (“Reply Br.,” filed February 27,
2009), and the Examiner’s Answer (“Ans.,” mailed December 30, 2008),
and Final Rejection (“Final Rej.,” mailed July 9, 2008).
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Application 11/457,984

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(b) assigning a unique identifier to each of a plurality of product 1
distributors; 2
(c) selling a copy of said product from a manufacturer to an end 3
purchaser through at least one of said distributors, wherein said 4
copy has a unique identifier; 5
(d) validating and recording said sale in step (c) of said copy of 6
the product to said end purchaser by reading the unique 7
identifier for said copy at a point of sale; 8
(e) matching the unique identifier of said copy of the product 9
with the unique identifiers of said distributors who were 10
involved in supplying said copy to said end purchaser in step 11
(c); and 12
(f) paying said distributors identified in step (e) according to a 13
pre-determined schedule. 14
15
THE REJECTIONS 16
The Examiner relies upon the following prior art: 17
Galuten et al. US 2005/0192871 A1 Sep. 1, 2005
De la Huerga US 2006/0054682 A1 Mar. 16, 2006
18
Claims 4, 9, and 14 stand rejected under 35 U.S.C. § 112, second 19
paragraph, as being indefinite for failing to particularly point out and 20
distinctly claim the subject matter which the Appellant regards as the 21
invention3. 22

3 The Examiner has asserted a rejected against claims 4, 9, and 14 under 35
U.S.C. § 112, second paragraph, in the Final Rejection. The Examiner has
withdrawn a previously asserted rejection of these claims under 35 U.S.C. §
112, second paragraph, in the Final Rejection and has asserted the current
rejection based on the Appellant’s amendments.
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Application 11/457,984

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Claims 1, 3-6, 8-11, and 13-15 stand rejected under 35 U.S.C. § 102(e) 1
as being anticipated by Galuten. 2
Claims 2, 7, and 12 stand rejected under 35 U.S.C. § 103(a) as 3
unpatentable over Galuten and de la Huerga. 4
ISSUES 5
The issue of whether the Examiner erred in rejecting claims 4, 9, and 14 6
under 35 U.S.C. § 112, second paragraph, as failing to particularly point out 7
and distinctly claim the subject matter which the Appellant regards as the 8
invention turns on whether the Appellant presents any arguments to against 9
the Examiner’s finding that claims 4, 9, and 14 are indefinite. 10
The issue of whether the Examiner erred in rejecting claims 1, 3-6, 8-11, 11
and 13-15 under 35 U.S.C. § 102(e) as being anticipated by Galuten turns on 12
whether Galuten describes limitations (a), (d), and (e). 13
The issue of whether the Examiner erred in rejecting claims 2, 7, and 12 14
under 35 U.S.C. § 103(a) as unpatentable over Galuten and de la Huerga 15
turns on whether a person with ordinary skill in the art would have been lead 16
to combine Galuten and de la Huerga. 17
FACTS PERTINENT TO THE ISSUES 18
The following enumerated Findings of Fact (FF) are believed to be 19
supported by a preponderance of the evidence. 20
Facts Related to the Prior Art 21
Galuten 22
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01. Galuten is directed to transmitting information specifying 1
particular media or portions of media in order to govern and 2
synchronize the rendition of such media where the distribution is 3
controlled by electronic contracts and business rules. Galuten ¶ 4
0006. Galuten is concerned with the distribution of electronic 5
content or physical content that is received in the mail. Galuten ¶ 6
0009. 7
02. A content owner and/or distributor assemble content and the 8
terms and conditions of the content for distribution and sale. 9
Galuten ¶ 0026. A financial contract sets forth the terms and 10
conditions under which the retailer and distributor are 11
compensated for the distribution of the content. Galuten ¶ 0027. 12
The method then begins with a consumer accessing a retail web 13
site to browse content and an offer for the sale of the content. 14
Galuten ¶ 0058. The consumer selects content by submitting a 15
request for the content. Galuten ¶ 0059. If the consumer does not 16
have the Consumer Player, the registration manager downloads 17
the Consumer Player software package to the consumer’s personal 18
computer. Galuten ¶ 0060. The Consumer Player manages the 19
security of the system on an ongoing basis. Galuten ¶ 0018. The 20
request for content is then processed by Reference Services, to 21
ensure the request is unique and associated to a retail offer, and 22
Delivery Service, to determine whether the content is available. 23
Galuten ¶’s 0061-0062. The transaction is further processed, 24
recorded, and completed with the account information being 25
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Application 11/457,984

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submitted to a clearinghouse for processing the payment of the 1
transaction. Galuten ¶’s 0094-0095. 2
03. A secure data structure, referred to as a handle, is used to 3
identify a particular content. Galuten ¶ 0124. The data structure 4
contains information regarding the content. Galuten ¶ 0124. The 5
handle includes an Object ID that uniquely identifies the content 6
and a SKU ID that refers to the product for sale. Galuten ¶’s 7
0124-0125. The handle typically further includes all of the 8
participants of the value chain associated with the content, 9
including the Distributor ID, Retailer or Channel ID, Renderer ID, 10
Consumer ID, and some number of Object IDs. Galuten ¶’s 0126 11
and 0134. A consumer attaches a handle to the content. Galuten ¶ 12
0135. For example, a consumer clicks on a song title, which 13
refers to the Content Object, and drags the selection into an email 14
message. Galuten ¶ 0135. The player software then binds at least 15
the Object ID(s), SKU ID, Consumer ID, Distributor ID, Retailer 16
ID, and Renderer ID into the handle and emails the handle to the 17
consumer. Galuten ¶ 0135. The consumer then opens or accesses 18
the handle with the Consumer Player and the Consumer Player 19
typically resolves the handle and assists the consumer in acquiring 20
and rendering the content. Galuten ¶ 0135. The Player further 21
serves as an interface in the rendition of the content. ¶ 0135. A 22
consumer may purchase content with limited access rights and the 23
consumer player, serving as the interface, reads and manages the 24
usage rights and other terms of the product. Galuten ¶’s 0095 and 25
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0135. For example, a consumer can outright purchase a song for 1
$10 or purchase a single listen to a song for $1. Galuten ¶ 0095. 2
de la Huerga 3
04. De la Huerga is directed to determining when a product or 4
medication has been distributed or dispensed properly. De la 5
Huerga ¶ 0003. De la Huerga is concerned with the verification of 6
software and copies of software to ensure they are not fraudulent. 7
De la Huerga ¶ 0017. 8
05. De la Huerga describes a labeling and verification system that 9
uses unique codes and associates these codes to products or 10
containers. De la Huerga ¶ 0021. The codes are used so that the 11
product information can be updated with additional information 12
related to the shipping, dispensing, or consuming of the product to 13
accumulate a life history. De la Huerga ¶ 0021. This information 14
is used to determine whether the product is legitimate and possibly 15
fraudulent products are reported. De la Huerga ¶ 0021. 16
ANALYSIS 17
Claims 4, 9, and 14 rejected under 35 U.S.C. § 112, second paragraph, 18
as being indefinite for failing to particularly point out and distinctly claim 19
the subject matter which the Appellant regards as the invention 20
The Examiner found that the limitation “to the other distributors” is 21
vague and definite. The Appellant has not argued this rejection in the Brief. 22
We take this as an indication that the Appellant has waived his arguments as 23
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Application 11/457,984

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to this rejection and as such we summarily sustain the Examiner in rejecting 1
these claims. 2
Claims 1, 3-6, 8-11, and 13-15 rejected under 35 U.S.C. § 102(e) as 3
being anticipated by Galuten 4
The Appellant contends that Galuten fails to describe limitations (a), (d), 5
and (e) of claim 1 and as similarly recited in claims 6 and 11. App. Br. 5-9 6
and Reply Br. 10-12. We disagree with the Appellant. Limitation (a) 7
requires assigning a unique identifier to a product and limitation (d) requires 8
validating and recording the sale of the copy of the product by reading the 9
unique identifier at the point of sale. Limitation (e) further requires 10
matching the unique identifier of the copy of the product with the unique 11
identifier of the distributor supplying the copy. 12
Galuten describes an electronic content distribution method that creates a 13
handle for a product. FF 03. The handle includes specific information about 14
the product and transaction, including the consumer ID, the retailer and 15
distributor IDs, the object ID, and the SKU ID. FF 03. The combination of 16
these IDs creates a unique handle for the transaction. As such, the handle 17
for the product is a unique identifier to the product. The Appellant argues 18
that there is not a unique identifier for each copy of the merchandise (App. 19
Br. 7); however, the handle includes information specific to that copy of the 20
merchandise. Specifically, Galuten describes an example where a user is 21
downloading a copy of a song and as such, the handle includes information 22
specific to that downloaded copy of the song. FF 03. As such, Galuten 23
describes assigning a unique identifier, the handle, to a product as required 24
by limitation (a). 25
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Application 11/457,984

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Galuten further describes that a consumer player binds all of the IDs into 1
the handle when a consumer selects the product. FF 03. When the 2
consumer receives the content, the consumer player accesses the handle and 3
resolves all of the IDs and usage rights contained in the handle. FF 03. 4
Galuten further describes that each transaction is recorded and stored in a 5
transaction database. FF 02. That is, the consumer player is reading the 6
unique identifier (handle) and validating the IDs and usage rights. Since the 7
consumer computer is where the purchase is made, that computer serves as 8
the point of sale. The Appellant contends that Galuten only validates the 9
offer of sale created by a retailer when the retailer is assembling the content 10
for sale (App. Br. 6 and 8-9); however, Galuten’s description of a consumer 11
player reading the usage rights and IDs in a handle is validation performed 12
by Galuten. As such, Galuten describes limitation (d). 13
The handle of the purchased product includes a Distributor ID, a Retailer 14
ID, and a Renderer ID. FF 03. Each of these participants in the value chain 15
is compensated based upon an agreed financial contract. FF 02. Since the 16
consumer player reads all of the IDs in the handle and the distributor, 17
retailer, and renderer IDs are stored in the handle, the unique identifier 18
(handle) is matched with the distributors of the product. As such, Galuten 19
describes limitation (e). 20
Claims 2, 7, and 12 rejected under 35 U.S.C. § 103(a) as unpatentable 21
over Galuten and de la Huerga 22
The Appellant contends that there is no motivation to combine Galuten 23
and de la Huerga because Galuten is limited to digital products and de la 24
Huerga deals with tracking medication using RFID. App. Br. 9-10 and 25
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Application 11/457,984

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Reply Br. 9-10. We disagree with the Appellant. Galuten and de la Huerga 1
are both concerned with the distribution of products, either physical products 2
or software products. FF 02 and 04. As such, Galuten is not limited to 3
digital products and de la Huerga deals with more than just the tracking of 4
medication using RFID. Galuten and de la Huerga are also concerned with 5
the security of the system and managing fraudulent use of content. FF 02 6
and 04. Galuten solves this concern by managing the security of the system 7
through the use of the consumer player on an ongoing basis. FF 02. De la 8
Huerga solves this concern by maintaining a product history in a unique 9
code associated with a product and monitoring the product history for 10
fraudulent use. FF 04. As discussed supra, Galuten also associates a unique 11
identifier with a product. FF 02-03. A person with ordinary skill in the art 12
would have recognized to combine Galuten and de la Huerga in order to 13
increase the security of the system of Galuten by monitoring the product 14
history for fraudulent use. As such, Galuten and de la Huerga are concerned 15
with the same problem and a person with ordinary skill in the art would have 16
been lead to combine their teachings. 17
CONCLUSIONS OF LAW 18
The Examiner did not err in rejecting claims 4, 9, and 14 under 35 19
U.S.C. § 112, second paragraph, as failing to particularly point out and 20
distinctly claim the subject matter which the Appellant regards as the 21
invention. 22
The Examiner did not err in rejecting claims 1, 3-6, 8-11, and 13-15 23
under 35 U.S.C. § 102(e) as being anticipated by Galuten. 24
Appeal 2009-013417
Application 11/457,984

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The Examiner did not err in rejecting claims 2, 7, and 12 under 35 1
U.S.C. § 103(a) as unpatentable over Galuten and de la Huerga. 2
DECISION 3
To summarize, our decision is as follows. 4
• The rejection of claims 4, 9, and 14 under 35 U.S.C. § 112, second 5
paragraph, as failing to particularly point out and distinctly claim the 6
subject matter which the Appellant regards as the invention is 7
sustained. 8
• The rejection of claims 1, 3-6, 8-11, and 13-15 under 35 U.S.C. 9
§ 102(e) as being anticipated by Galuten is sustained. 10
• The rejection of claims 2, 7, and 12 under 35 U.S.C. § 103(a) as 11
unpatentable over Galuten and de la Huerga is sustained. 12
13
No time period for taking any subsequent action in connection with this 14
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 15
§ 1.136(a)(1)(iv) (2007). 16
17
AFFIRMED 18
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CARSTENS & CAHOON, LLP 24
13760 NOEL ROAD, SUITE 900 25
DALLAS TX 75240 26