Ex Parte Gulliver et al

Patent Trial and Appeal Board

Aug 29, 2016

12550634 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/550,634 08/31/2009 CHRISTOPHER ALAN GULLIVER
36738 7590 08/31/2016
ROGITZ & AS SOCIA TES
750B STREET
SUITE 3120
SAN DIEGO, CA 92101
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.
50S5149.02 1324
EXAMINER
GEORGALAS, ANNE MARIE
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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):
Noelle@rogitz.com
eofficeaction@appcoll.com
J ohn@rogitz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER ALAN GULLIVER, MASAKI TAKEMURA,
and RUSSELL PAIK
Appeal2014-003393
Application 12/550,634 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, BART A. GERSTENBLITH, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the
Examiner's final decision rejecting claims 37-39, 41--44, and 50-58. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 The Appellants identify Sony Corp. as the real party in interest. Appeal
Br. 2.
Appeal2014-003393
Application 12/550,634
Claim 37 is illustrative:
37. A portable computing device, comprising:
a processor configured to execute at least one download
utility, the processor configured to wirelessly receive, from at
least one kiosk, at least one demonstration version of software
and identifying data of the demonstration version being a free,
partial version of the software, with plural lines of code omitted
or disabled so as to render the demonstration version only
partially as capable as the software;
the processor configured to access a network server to
purchase the software at least in part by uploading the
identifying data to the server; and further
the processor configured to execute the demonstration
version prior to purchase of the software to execute some
functions of the software, the demonstration version not
permitting the processor to execute all functions of the software
prior to purchasing the software, the processor configured to
receive a solicitation message from the kiosk, the processor
configured to, responsive to the solicitation message, present on
the computing device a prompt to accept the utility, the
processor configured to download the utility responsive to user
acceptance of the utility using the prompt
Appellants appeal the following rejections:
1. Claims 37-39, 42--44, and 58 under 35 U.S.C. § 103(a) as unpatentable
over Stefanik (US 6,959,285 B2, iss. Oct 25, 2005), Horstmann
(US 6,363,356 Bl, iss. Mar. 26, 2002) (hereinafter "Horstmann '356"),
and Horstmann (US 6,009,525, iss. Dec. 28, 1999) (hereinafter
"Horstmann '525").
2. Claims 50-52 and 55-57 under 35 U.S.C. § 103(a) as unpatentable over
Stefanik, Horstmann '356, Horstmann '525, and Fallon
(US 2002/0069354 Al, pub. June 6, 2002).
3. Claim 41under35 U.S.C. § 103(a) as unpatentable over Stefanik,
2
Appeal2014-003393
Application 12/550,634
Horstmann '356, Horstmann '525, and Hitson (US 2002/0010759 Al,
pub. Jan. 24, 2002).
4. Claims 53 and 54 under 35 U.S.C. § 103(a) as unpatentable over
Stefanik, Horstmann '356, Horstmann '525, Fallon, and Hitson.
ISSUE
Did the Examiner err in rejecting the claims because Horstmann '525
does not disclose a partial version of the software with plural lines of code
omitted or disabled so as to render the demonstration version only partially
as capable as the software?
ANALYSIS
The Appellants argue that the prior art does not disclose plural lines of
code omitted or disabled so as to render the demonstration version only
partially as capable. We agree.
The Examiner reiies on Horstmann '525 for teaching this subject
matter. Specifically, the Examiner relies on the teaching at column 2, lines
7-13 that in the case of Try/Buy, the product is altered in such a way that the
potential customer can use the product a limited number of times, a limited
amount of time, or the functionality is "crippled" in some way. This portion
of Horstmann '525 does not disclose how the functionality is crippled. In
fact, the Examiner has not directed our attention to any portion of
Horstmann '525 regarding how the crippling of the functionality is done,
much less that the crippling is done by omitting or disabling code so that the
demonstration version of the software is only partially as capable as the
software, as required by claim 37.
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Appeal2014-003393
Application 12/550,634
In view of the foregoing, we will not sustain the Examiner's rejection
of claim 37 and claims 38, 39, and 41--44 dependent therefrom. We will
also not sustain the rejections of the remaining claims because in each of the
rejections the Examiner relies on Horstmann '525 for teaching subject
matter we have found it does not teach.
DECISION
The decision of the Examiner is reversed.
REVERSED
4