Ex Parte Howard et al

Patent Trial and Appeal Board

Mar 25, 2013

11549734 (P.T.A.B. Mar. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DALE S. HOWARD,
L.JOY GRIEBENOW, and
KIM LENGER
____________

Appeal 2010-008213
Application 11/549,734
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Dale S. Howard, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 25, 27-33, 35, 37-42, 44, 46-52, 54, and
56-65. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We AFFIRM-IN-PART.1

THE INVENTION
Claim 25, reproduced below, is illustrative of the subject matter on
appeal.
25. A computerized system for distributing an electronic publication
comprising:
a storage medium;
computer software stored on the storage medium and operable
to:
retrieve an electronic publication;
receive, from a publisher, a designation for each of a
plurality of items of the electronic publication as one of an exportable
item or a non-exportable item; and
send the electronic publication to the consumer's
electronic mail address,
wherein the electronic publication is suitable for viewing by a
reading application installed on a consumer's computer, the reading
application operable to control the export of the plurality of items by a
consumer, the reading application operable to permit the consumer to
export one or more exportable items from the electronic publication,
the reading application operable to prevent the consumer from
exporting one or more non-exportable items from the electronic
publication.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Sep. 17, 2009) and Reply Brief (“Reply Br.,” filed Feb. 26, 2010),
and the Examiner’s Answer (“Ans.,” mailed Dec. 28, 2009).
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Choudhury
Reilly
Dedrick
Stefik

US 5,509,074
US 5,740,549
US 5,724,521
US 6,236,971 B1
Apr. 16, 1996
Apr. 14, 1998
Mar. 3, 1998
May 22, 2001
The following rejections before us for review:
1. Claims 25, 32, 33, 35, 41, 42, 44, 51, 52, 54, and 60-65 are rejected
under 35 U.S.C. §103(a) as being unpatentable over Stefik and
Choudhury.
2. Claims 27, 30, 31, 37, 40, 46, 49, 50, 56, and 59 is rejected under 35
U.S.C. §103(a) as being unpatentable over Stefik, Choudhury, and
Reilly.
3. Claims 28, 29, 38, 39, 47, 48, 57, and 58 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Stefik, Choudhury, and Dedrick.

ISSUES
Has the Examiner made out a prima facie case of obviousness for the
claimed subject matter over the combined disclosures of the cited prior art?

ANALYSIS
The rejection of claims 25, 32, 33, 35, 41, 42, 44, 51, 52, 54, and 60-65
under 35 U.S.C. §103(a) as being unpatentable over Stefik and Choudhury.
System claims 25 and 35 and method claims 44 and 54 are the
independent claims. The Examiner takes the same position with respect to
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all these claims.
Taking independent claim 25 as representative, the Examiner’s
position is that Stefik discloses all the claim limitations but for
computer software stored on the storage medium and
operable to: ...
send the electronic publication to the consumer's
electronic mail address ... .
Claim 25. Ans. 3-4. Choudhury is relied upon as evidence that this subject
matter was known in the art at the time of the invention. Ans. 4.
Stefik does not teach sending the electronic publication to the
consumer's electronic mail address. However, Choudhury
teaches that it is old and well known in the promotion art to
send electronic publication to user's email address (see col 2,
lines 15-35).
Ans. 5. According to the Examiner, “it would have been obvious to a person
of ordinary skill in the art at the time the application was made, to know that
Stefik would send electronic publications to consumer's electronic mail
address, as Choudhury teaches that it is old and well known to do so.” Ans.
5.
The Appellants disagree – focusing our attention on the export control
limitations in the claim.
Representative claim 25 requires, "wherein the electronic
publication is suitable for viewing by a reading application
installed on a consumer's computer" (emphasis added). Claim
25 elaborates that the reading application is "operable to control
the export of the plurality of items by a consumer." Claim 25
also requires that the reading application be "operable to permit
the consumer to export one or more exportable items from the
electronic publication" (emphasis added). Finally, claim 25
requires that the reading application be "operable to prevent the
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consumer from exporting one or more non-exportable items
from the electronic publication" (emphasis added).
App. Br. 11.
As to the export control limitations in the claim, the Examiner relied
first on col. 9, ll. 12-27 of Stefik as evidence that these limitations were
disclosed in the prior art at the time of the invention and then, to further
elaborate on his position, on col. 9, ll. 15-30; col. 34, ll. 15-67; col. 6, l. 66-
col. 7, ll. 1-3; and, col. 8, ll. 30-40 of Stefik. Ans. 4.
The Appellants argue that
The Examiner alleges that Stefik teaches these claim
limitations at col. 9, ll. 12-30 and at col. 34, ll. 15-67.
Appellants respectfully submit to the Board that the Examiner
is mistaken. Neither of these citations teaches or even suggests
permitting the consumer to export items from an electronic
publication or preventing the consumer from exporting items
from the electronic publication. Instead, col. 9, ll. 12-30 teaches
that Stefik’s digital works are associated with usage rights. ...
Although Stefik appears to teach usage rights for digital works
and even usage rights on individual parts of a digital work,
Stefik still does not teach or even suggest usage rights that
permit a consumer to export items from the digital work, nor
does Stefik here teach or suggest usage rights that prevent a
consumer from exporting items from the digital work.
App. Br. 11-12.
The Examiner responds by arguing that the export control limitations
in the claim “is interpreted in light of Appellant's specification as simply
permitting the consumer to save or copy items from an electronic publication
or preventing the consumer from saving or copying items from the electronic
publication.” Ans. 12. The Examiner reaches this claim construction in light
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of the Specification. According to the Examiner the export control
limitations in the claim are
only mentioned or explained in Appellant's specification page
10, lines 18-25 where it recites “the invention allows the
publisher of the electronic publication to decide whether to
allow the consumer to export portions of electronic publication
for their personal use. The control could be item by item or
apply to the entire publication. Reading application controls
these options. This feature of the invention allows a consumer
to save specific items that they particularly desire to save. The
consumer could even create libraries of items related to a
particular topic. This feature would also allow a consumer to
save only those items of particular interest, which may save
storage space”. Appellant's specification does not explain
anything else and Appellant's specification does not mention
any algorithm that explains how to permit a consumer to export
items from an electronic publication or prevent a consumer
from exporting items from the electronic publication and how
the reading application controls the export of items.
Ans. 11.
“Claim construction begins, as it must, with the words of the claims.”
Vehicular Techs. Corp. v. Titan Wheel Int'l, 141 F.3d 1084, 1088 (Fed. Cir.
1998). In that regard, claim 25 calls for “computer software stored on [a]
storage medium and operable to ... receive, from a publisher, a designation
for each of a plurality of items of [a] electronic publication as one of an
exportable item or a non-exportable item; and ... wherein the electronic
publication is suitable for viewing by a reading application installed on a
consumer's computer, the reading application operable to control the export
of the plurality of items by a consumer, the reading application operable to
permit the consumer to export one or more exportable items from the
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electronic publication, the reading application operable to prevent the
consumer from exporting one or more non-exportable items from the
electronic publication.”
The written description is “always highly relevant” in construing a
claim, and “it is the single best guide to the meaning of a disputed term,”
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
The Examiner relies on the Specification to construe the claim term
“exporting” as broadly covering saving and copying items from the
electronic publication. However, the Specification (p. 10, ll. 18-25) is clearly
consistent with the claim in requiring “the reading application [as being]
operable to control the export of the plurality of items by a consumer.”
Accordingly, the Examiner’s view that, in light of the Specification, the
claimed subject matter is met by “simply permitting the consumer to save or
copy items from an electronic publication or preventing the consumer from
saving or copying items from the electronic publication” (Ans. 12) is an
unreasonably broad construction of the claim. In accordance with the claim,
and consistent with what the Specification discloses, a necessary element to
the claimed system is that it include “[a] reading application operable to
control the export of the plurality of items by a consumer.” We agree with
the Appellants that “[t]he ‘reading application’ ... should be given full
patentable weight.” Reply Br. 5.
The Examiner cites col. 9, ll. 12-27 of Stefik as showing “[a] reading
application operable to control the export of the plurality of items by a
consumer.” Ans. 4. Col. 9, ll. 12-27 is reproduced below:
Usage rights are attached directly to digital works. Thus, it is
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important to understand the structure of a digital work. The
structure of a digital work, in particular composite digital
works, may be naturally organized into an acyclic structure
such as a hierarchy. For example, a magazine has various
articles and photographs which may have been created and are
owned by different persons. Each of the articles and
photographs may represent a node in a hierarchical structure.
Consequently, controls, i.e. usage rights, may be placed on each
node by the creator. By enabling control and fee billing to be
associated with each node, a creator of a work can be assured
that the rights and fees are not circumvented.
We do not see in this passage, nor does the Examiner clearly explain where
in this passage, “[a] reading application operable to control the export of the
plurality of items by a consumer” is disclosed. The passage describes usage
rights that may be placed on, for example, articles and photographs in a
digital work.
No other evidence being cited to show a system including “[a] reading
application operable to control the export of the plurality of items by a
consumer” as claimed was known or would have been obvious to one of
ordinary skill in the art, a prima facie case of obviousness for the subject
matter of claim 25 (and dependent claims 32, 33 and 62) over the cited prior
art has not been made out in the first instance. We reach the same
conclusion as to independent claims 44 and 54 and claims 51, 52, 60, 61, 64
and 65 dependent thereon because they also contain the limitation at issue.
We reach the opposite conclusion with respect to claim 35. A
limitation to “[a] reading application operable to control the export of the
plurality of items by a consumer” does not appear to be included in this
claim. Since the Appellants argued the claims as a group (App. Br. 11-14),
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no arguments were made separately challenging the rejection of claim 35 on
grounds other than that the prior art failed to disclose or suggest “[a] reading
application operable to control the export of the plurality of items by a
consumer.” Since claim 35 does not include this limitation, that argument
with respect to this claim and claims 41, 42, and 63 is not commensurate in
scope and therefore unpersuasive as to error in their rejection.

The rejection of claims 27, 30, 31, 37, 40, 46, 49, 50, 56, and 59 under 35
U.S.C. §103(a) as being unpatentable over Stefik, Choudhury, and Reilly.
We will reverse this rejection as to claims dependent on claims 25, 44,
and 54, whose rejection we have reversed above. For the same reasons, we
will not sustain the rejections of claims 27, 30, 31, 46, 49, 50, 56 and 59
over the cited prior art. 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 . . . .").
We shall sustain the standing 35 U.S.C. § 103 rejection of dependent
claims 37 and 40 as being unpatentable over Stefik, Choudhury, and Reilly
since the Appellants have not challenged such with any reasonable
specificity, thereby allowing claims 37 and 40 to stand or fall with parent
claim 35 (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir. 1987)).

The rejection of claims 28, 29, 38, 39, 47, 48, 57, and 58 under 35 U.S.C.
§103(a) as being unpatentable over Stefik, Choudhury, and Dedrick.
We will reverse this rejection as to claims dependent on claims 25, 44,
and 54, whose rejection we have reversed above. For the same reasons, we
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will not sustain the rejections of claims 28, 29, 47, 48, 57, and 58 over the
cited prior art.
We shall sustain the standing 35 U.S.C. § 103 rejection of dependent
claims 38 and 39 as being unpatentable over Stefik, Choudhury, and Reilly
since the Appellants have not challenged such with any reasonable
specificity, thereby allowing claims 38 and 39 to stand or fall with parent
claim 35.

CONCLUSIONS
The rejection of claims 25, 32, 33, 44, 51, 52, 54, 60, 61, 62, 64, and
65 under 35 U.S.C. §103(a) as being unpatentable over Stefik and
Choudhury is reversed.
The rejection of claims 35, 41, 42 and 63 under 35 U.S.C. §103(a) as
being unpatentable over Stefik and Choudhury is affirmed.
The rejection of claims 27, 30, 31, 46, 49, 50, 56, and 59 under 35
U.S.C. §103(a) as being unpatentable over Stefik, Choudhury, and Reilly is
reversed.
The rejection of claims 37 and 40 under 35 U.S.C. §103(a) as being
unpatentable over Stefik, Choudhury, and Reilly is affirmed.
The rejection of claims 28, 29, 47, 48, 57, and 58 under 35 U.S.C.
§103(a) as being unpatentable over Stefik, Choudhury, and Dedrick is
reversed.
The rejection of claims 38 and 39 under 35 U.S.C. §103(a) as being
unpatentable over Stefik, Choudhury, and Dedrick is affirmed.

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DECISION
The decision of the Examiner to reject claims 25, 27-33, 35, 37-42,
44, 46-52, 54, and 56-65 is affirmed-in-part; that is, the rejection of claims
25, 27-33, 44, 46-52, 54, 56-62, 64, and 65 is reversed and the rejection of
claims 35, 37-42 and 63 is affirmed.

AFFIRMED-IN-PART

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