Ex Parte Hannsmann et al

Patent Trial and Appeal Board

Mar 6, 2014

10539644 (P.T.A.B. Mar. 6, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte UWE HANNSMANN, THOMAS STOBER,
and JAMES SCOTT JENNINGS
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Appeal 2011-009648
Application 10/539,644
Technology Center 2100
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Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 1, 16, 17, 45-47,
49, 50, 53-55, 57, 58, and 61-68 (App. Br. 3). Examiner entered rejections
under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The Real Party in Interest is International Business Machines Corporation
(App. Br. 1).
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STATEMENT OF THE CASE
The claims are directed to a method for providing content data at a
client, a client in communication with a server to access contend data, and a
digital storage medium including a computer program executed at a client to
access content data and communicate with a server. Claims 1, 47, and 55
are representative and are reproduced in the Claims Appendix of Appellants’
Brief.
For the reasons set forth below, the record presented to this panel is
more than a little ambiguous. Therefore, we are compelled to identify and
resolve the ambiguities on this record, prior to addressing the merits of the
rejection before this panel.
Examiner’s Final Rejection sets out two grounds of rejection (see Fin.
Rej. 3 and 8; see also Ans. 4 and 9):
Claims 1, 16, 17, 45-47, 49, 50, 53-55, 57, 58, 61, and 62 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of
Remer2 and Abburi.3,4
Claims 40, 52, 60, and 63-68 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Remer, Abburi, and Kazuo.5,6

2 Remer et al., US 2003/0088516 A1, published May 8, 2003.
3 Abburi et al., US 7,203,966 B2, issued Apr. 10, 2007.
4 Examiner’s statement of the rejection fails to include claims 61 and 62
(Fin. Rej. 3; see also Ans. 4). Nevertheless, Examiner does address the
merits of claims 61 and 62 in the body of the rejection (Fin. Rej. 7; see also
Ans. 8). Appellants, however, recognize that claims 61 and 62 are under
rejection (App. Br. 16).
5 Kenichirou et al., JP 10215242 (A), published August 11, 1998.
6 We note that Examiner included canceled claims 40, 52, and 60 in the
statement of this rejection (Ans. 9).
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At the time of Examiner’s Final Rejection, Appellants’ claim 40 was
drawn to:
The method of claim 1, further comprising:
permitting access to the content data in response to
determining that the available content usage in the license status
indicates that the license has expired;
tracking content usage in response to determining that the
available content usage indicates that the license has expired
and permitting access to the content data after the license has
expired;
synchronizing with the server to transmit the tracked
amount of usage of the content data at the client after the
license status is expired at the client;
providing payment for the amount of usage of the content
data after the license status is expired.
(see Appellants’ January 19, 2010 Amendment, Claim 40.) At the time of
Examiner’s Final Rejection, Appellants’ claims 52 and 60, depended from
claims 47 and 55 respectively, and contained limitations consistent with
those in Appellants’ claim 40 (see id. Claims 52 and 60).
To account for the requirements of dependent claims 40, 52, and 60,
Examiner added Kazuo to the combination of Remer and Abburi, which was
applied to the independent claims (see Fin. Rej. 8; Cf. id. at 3). According to
Examiner,
As per claim 40, 52, and 60, Kazuo discloses permitting
access to the content data in response to determining that the
available content usage in the license status indicates that the
license has expired; tracking content usage in response to
determining that the available content usage indicates that the
license has expired and permitting access to the content data
after the license has expired; synchronizing with the server to
transmit the tracked amount of usage of the content data at the
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client after the license status is expired at client (delivering a
usage history to a center 30 at a suitable time [0054]);
Kazuo discloses providing payment for the amount of
usage of the content data after the license status is expired(A
fee calculated based on a collected history is charged directly
from each user's account and distributed to content provider
according to utilization quantity of each contents [0054])[.]
(Fin. Rej. 8; see also Ans. 9.)
In response to Examiner’s Final Rejection, Appellants’ canceled
claims 40, 52, and 60, incorporating the subject matter of these claims into
their respective independent claim 1, 47, or 55 (see Appellants’ July 15,
2010, Response to Final Office Action). While Examiner entered
Appellants’ July 15, 2010, After Final Amendment, Examiner failed to
modify the statement of the rejection to correspond to the now amended
claims (see Examiner’s August 3, 2010, Advisory Action; Appellants’
August 3, 2010, Response to Final Office Action; see also Ans. 4 and 9).
Emphasizing the ambiguity created by Examiner’s failure to restate
the ground(s) of rejection in light of Appellants’ claim amendment,
Appellants present one ground of rejection for our review. The rejection of
“[c]laims 1, 16, 17, 45-47, 49, 50, 53-55, 57, 58, and 61-68 . . . under 35
U.S.C. § 103 as obvious over Remer . . . in view of Aburri . . . and Kazuo”
(App. Br. 16). Appellants then argue that Examiner’s rejection of, inter alia,
independent claims 1, 47, and 55, which were amended after Final
Rejection, is in error because Kazuo fails to suggest the claimed subject
matter (see App. Br. 17). To re-emphasize, Examiner did not, at any time
between the Final Rejection and the Answer, present a rejection of
independent claims 1, 47, and 55 over the combination of Remer, Aburri,
and Kazuo (see Fin. Rej. 3 and 8; see also Ans. 4 and 9). Nevertheless,
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instead of taking this opportunity to correct this deficiency in the Answer,
Examiner simply responded to Appellants’ argument as if, inter alia, claims
1, 47, and 55 were indeed rejected over the combination of Remer, Aburri,
and Kazuo (see e.g., Ans. 11-13).
To resolve the foregoing ambiguity on this record, we find that this
record presents a single ground of rejection for our review. Specifically:
Claims 1, 16, 17, 45-47, 49, 50, 53-55, 57, 58, and 61-68 stand
rejected under 35 U.S.C. § 103 as obvious over the combination of Remer,
Aburri, and Kazuo (see App. Br. 16.)
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion that the combination of Remer, Aburri, and Kazuo suggest the
requirement in Appellants’ claims of permitting access to the content data in
response to determining that the available content usage in the license status
indicates that the license has expired and then tracking post-expiration
content usage?
FACTUAL FINDINGS (FF)
FF 1. Examiner relies on Kazuo to make up for the failure of the
combination of Remer and Aburri to suggest
permitting access to . . . content data in response to determining
that the available content usage in the license status indicates
that the license has expired; tracking content usage in response
to determining that the available content usage indicates that the
license has expired and permitting access to the content data
after the license has expired; synchronizing with the server to
transmit the tracked amount of usage of the content data at the
client after the license status is expired at client (delivering a
usage history to a center 30 at a suitable time [0054]); [and] . . .
providing payment for the amount of usage of the content data
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after the license status is expired(A fee calculated based on a
collected history is charged directly from each user's account
and distributed to content provider according to utilization
quantity of each contents [0054])[.]
(see Ans. 9.)
FF 2. Kazuo suggests that
A user uses contents using an access ticket. Information about
utilization conditions, such as a utilization charge, a payment
method, the expiration date, is given to an access ticket in
addition to information for access control. A user’s use of
contents will record the history on the token . . . according to
use. Under the present circumstances, a utilization condition in
that utilization time point is also simultaneously recorded on a
history. A user is suitable timing and sends a utilization history
to the center. . .. The center . . . is charged based on a collected
utilization history. A fee calculated based on a collected history
is charged directly from each user’s account, and is distributed
to the content provider . . . according to utilization quantity of
each contents.
(Kazuo ¶ [0054].)
FF 3. Examiner finds that “Kazuo shows that there are no limits to using
the contents, despite having an expiration date” (Ans. 13).
ANALYSIS
Based on the combination of Remer, Aburri, and Kazuo, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie “obvious to modify the invention [of] Remer in view of
Aburri to include the feature of Kazuo. [The] [m]odification allows the user
to pay for contents based on how much it is utilized” (Ans. 10). We are not
persuaded.
As Appellants’ explain, notwithstanding Examiner’s assertion to the
contrary, paragraph 54 of Kazuo fails to teach or suggest “the claim
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requirement of permitting access to the content data in response to
determining that the available content usage in the license status indicates
that the license has expired and then tracking post-expiration content usage”
(App. Br. 17; Cf. FF 3). Stated differently, Examiner failed to establish an
evidentiary basis on this record to support a conclusion that the term
“expiration date,” generally understood by those of ordinary skill in the art
to mean the time point at which access or use terminates, could reasonably
be interpreted to mean continued access or use after an expiration date (Cf.
FF 3). Therefore, Examiner failed to establish that Kazuo’s utilization
conditions, which include an expiration date, will allow a user to access or
use content after the expiration date of the utilization conditions and that
such use will be tracked (see FF 2; Cf. FF 3).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion that the combination of Remer, Aburri, and Kazuo
suggest the requirement in Appellants’ claims of permitting access to the
content data in response to determining that the available content usage in
the license status indicates that the license has expired and then tracking
post-expiration content usage. The rejection of claims 1, 16, 17, 45-47, 49,
50, 53-55, 57, 58, and 61-68 under 35 U.S.C. § 103(a) as unpatentable over
the combination of Remer, Aburri, and Kazuo is reversed.

REVERSED
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