Ex Parte Klum et al

Patent Trial and Appeal Board

Oct 19, 2016

13267488 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/267,488
138517 7590
Pederson IP, LLC
P.O. Box 733
Willernie, MN 55090
10/06/2011
10/21/2016
FIRST NAMED INVENTOR
R. Daren Klum
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.
CRAM-006us01 8493
EXAMINER
REAGAN, JAMES A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
10/21/2016 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):
aaron@pedersonip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte R. DAREN KLUM,
MATTHEW D. FAIRCHILD,
KEITHA. PAGAN,
and DANIEL L. HENCH
Appeal2014-004565
Application 13/267 ,488 1
Technology Center 3600
Before ANTON W. PETTING, BART A. GERSTENBLITH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify "Cram Worldwide, LLC" as the real party in interest.
App. Br. 1.
Appeal2014-004565
Application 13/267,488
STATEMENT OF THE CASE2
R. Daren Klum, Matthew D. Fairchild, Keith A. Pagan, and Daniel L.
Hench (Appellants) seek review under 35 U.S.C. § 134 of a final rejection of
claims 1-20, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
Appellants invented a way of securely delivering individualized,
digital content, in certain examples large quantities of content (e.g.,
terabytes, etc.), to a plurality of users. Spec. para. 30.
Claims 1, 10, and 12 are the independent claims on appeal. An
understanding of the invention can be derived from a reading of exemplary
claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method of protecting digital content at a kiosk, the method
compnsmg:
[ 1] providing a plurality of memory devices, the plurality of
memory devices having pre-loaded content thereon;
[2] receiving a selection from a user;
[3] selecting a memory device from the plurality of pre-loaded
memory devices that matches the selection from the user;
[4] determining a dock to which the memory device is to be
coupled, wherein the dock is an electronic device that is distinct
from the kiosk and is configured to access content on one or
more of the memory devices;
and
2 Our decision will make reference to Appellants' Appeal Brief ("App. Br.,"
filed September 4, 2013) and Reply Brief ("Reply Br.," filed December 19,
2013), and the Examiner's Answer ("Ans.," mailed October 24, 2013) and
Final Action ("Final Act.," mailed November 28, 2012).
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Application 13/267,488
[5] protecting the memory device with a unique key
corresponding to the dock.
The Examiner relies upon the following prior art:
Phillips US 2008/0235144 Al
Taylor US 2009/0190142 Al
Ronen US 2011/0029435 Al
Sept. 25, 2008
July 30, 2009
Feb.3,2011
Appellants appeal the following rejections:
Claims 1-19 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Ronen, Phillips, and Taylor.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Ronen, Phillips, Taylor and Official Notice.
ISSUES
The issues of obviousness tum primarily on whether the art describe
using a dock that is distinct from a kiosk.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are supported by a
preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of "dock."
02. The plain meaning of a dock in a computer context is a device
in which a laptop computer, smartphone, or other mobile device
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Appeal2014-004565
Application 13/267,488
may be placed for charging, providing access to a power supply
and to peripheral devices or auxiliary features; a docking station. 3
Facts Related to Appellants' Disclosure
03. All recitations of a "dock" in the Specification refer to
examples and not to definitional statements regarding a dock.
Facts Related to the Prior Art
Ronen
04. Ronen is directed to a system for distributing electronic content.
Ronen para. 8.
05. Ronen describes purchasing electronic content from an online
store by selecting electronic content items that the end user wants
to purchase. To finalize the purchase, an end user may connect
his or her end user device to a kiosk that includes a dock or port to
connect to the kiosk. vVhen an end user docks his or her end user
device, the kiosk may automatically load the electronic content
that the end user selected to purchase. The kiosk may provide the
option of completing or editing the end user's purchase. Ronen
paras. 89-91.
Phillips
06. Phillips is directed to a proximity payment device is embodied
as a wristwatch. Phillips, Abstract.
3 http://www. oxforddictionaries. com/us/ definition/ american_english/ dock
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Application 13/267,488
07. Phillips describes secure communication techniques, such as
public key encryption and/or digital signatures, employed to
prevent forgery of authentication information. The user's
payment account number and/or a unique identifier for the
docking station may be used to generate the authentication
information. Phillips para. 68.
Taylor
08. Taylor is directed to an interactive kiosk and accompanying
method for receiving digital image data from a data storage device
and allowing a user to edit and print corresponding hardcopy
images or photographs. Taylor para. 16.
09. Although Taylor describes docks, all such descriptions are of
docks as part of a kiosk.
ANALYSIS
We are persuaded by Appellants' argument that the references fail to
describe a dock that is distinct from a kiosk. App. Br. 10-11. All three
independent claims share this limitation. The Examiner finds that Taylor
describes this. Final Act. 8. The Examiner further responds that he has
interpreted the distinct dock to be a docking station component
or module attached to the kiosk which are both distinct
components of the content-sharing system. The claim language
does not specifically state that the components are physically
separate, or that they are not connected, or that function
independently. Indeed, if any of these were the case, the system
would not function as intended.
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Application 13/267,488
Ans. 4. While we agree with the Examiner as to what the claim does not
say, the dock in Taylor is a component of its kiosk. A part that is subsumed
within another part cannot be said to be distinct because it is a component of
the larger part. As to the finding regarding ability to function, the
Specification describes how a dock is connected to a kiosk that is physically
remote from the dock and functions as claimed.
CONCLUSIONS OF LAW
The rejection of claims 1-19 under 35 U.S.C. § 103(a) as unpatentable
over Ronen, Phillips, and Taylor is improper.
The rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable
over Ronen, Phillips, Taylor and Official Notice is improper.
DECISION
The rejections of claims 1-20 are reversed.
REVERSED
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