Ex Parte Murphy

Patent Trial and Appeal Board

Jun 27, 2018

10522146 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/522,146 09/26/2005
25227 7590 06/29/2018
MORRISON & FOERSTER LLP
1650 TYSONS BOULEVARD
SUITE400
MCLEAN, VA 22102
FIRST NAMED INVENTOR
Scott Murphy
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.
584542000200 9164
EXAMINER
SHIBRU, HELEN
ART UNIT PAPER NUMBER
2484
NOTIFICATION DATE DELIVERY MODE
06/29/2018 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):
EOfficeVA@mofo.com
PatentDocket@mofo.com
pair_mofo@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT MURPHY
Appeal2018-001032
Application 10/522, 146
Technology Center 2400
Before ALLEN R. MacDONALD, CAROLYN D. THOMAS, and
ADAM J. PYONIN, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
1 Appellant indicates the real party in interest is DNET Media PTY Limited
of Windsor, Victoria, Australia. App. Br. 3.
Appeal2018-001032
Application 10/522, 146
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-10, 12-20, and 23. Appellant has cancelled claims 11, 21, and 22.
App. Br. 7. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
Representative Claim
Representative claim 1 under appeal reads as follows ( emphasis,
formatting, and bracketed material added):
1. A method for supplying digital files to a customer via a data
communications network accessible by the customer, the method
comprising the steps of: at a system comprising a customer device, an
intermediary server, and a plurality of content suppliers each
maintaining a data bank storing registered details of associated
customers and recordable media:
[A.] providing a recordable medium to a customer, and
registering details of the customer and the recordable
medium in a data bank of one of the plurality of
content suppliers that is associated with the
recordable medium provided to the customer,
establishing a connection between the customer
device reading the recordable medium and the
intermediary server, wherein the intermediary server
receives, from the customer device, a request to
supply one or more digital files;
[B.] in response to receiving by the intermediary server the
request to supply one or more digital files from the
customer device,
[i.] identifying by the intermediary server one of the
plurality of content suppliers that is associated
with the recordable medium being read by the
customer device, and
[ii.] establishing by the intermediary server a second
connection between the customer device and
2
Appeal2018-001032
Application 10/522, 146
the one of the plurality of content suppliers that
is associated with the recordable medium being
read by the customer device,
wherein the intermediary server maintains a data
table that identifies content suppliers associated
with different recordable media as well as IP
addresses of content suppliers;
[C.] forwarding by the intermediary server the request
from the customer device to the one of the plurality
of content suppliers that is associated with the
recordable medium being read by the customer
device;
[D.] in response to receiving the forwarded request by the
one of the plurality of content suppliers associated
with the recordable medium being read by the
customer device:
authenticating, by the one of the plurality of content
suppliers that is associated with the recordable
medium being read by the customer device, the
recordable medium and the customer by
comparing against the registered details of the
customer and the recordable medium stored in the
data bank maintained by the one of the plurality of
content suppliers; and
[E.] if the recordable medium and the customer are
successfully authenticated by the one of the plurality
of content suppliers associated with the recordable
medium being ready by the customer device and
payment information is verified by a separate bank
server,
supplying, via the second connection between the
one of the plurality of content suppliers and the
customer device, the requested one or more digital
files to the customer device to be recorded on the
recordable medium.
3
Appeal2018-001032
Application 10/522, 146
App. Br. (Claims Appendix 2).
Homer
Kutaragi et al.
References
US 2002/0042730 Al Apr. 11, 2002
US 2008/0098118 Al Apr. 24, 2008
Rejections
1. The Examiner rejected claim 7 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
2. The Examiner rejected claims 1-10, 12-20, and 23 under
35 U.S.C. § I03(a) as being unpatentable over the combination ofKutaragi
et al. (US 2008/0098118 Al) and Applicant's Admitted Related Art
(AARA). 2
3. The Examiner rejected claims 1-10, 12-20, and 23 under
35 U.S.C. § I03(a) as being unpatentable over the combination ofKutaragi
and Homer (US 2002/0042730 Al). 3
2 We select claim 1 as representative. Appellant does not argue separate
patentability for claims 2-10, 12-20, and 23. Except for our ultimate
decision, we do not discuss the Examiner's rejection of these claims further
herein.
3 Appellant argues this rejection (based on Kutaragi and Homer) solely by
reference to the arguments presented for the preceding rejection under § 103
based on Kutaragi and AARA. See App. Br. 15. Therefore, our decision as
to the rejection based on Kutaragi and AARA is determinative for this
rejection. Except for our ultimate decision, we do not discuss this rejection
further herein.
4
Appeal2018-001032
Application 10/522, 146
Issues on Appeal
Did the Examiner err in rejecting claim 7 as failing to comply with the
written description requirement?
Did the Examiner err in rejecting claim 1 as being obvious?
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
A. Section 112 Argument
Appellant raises the following argument in contending that the
Examiner erred in rejecting claim 7 under 35 U.S.C. § 112(a).
With respect to paragraph 61 of the Published Application
(see Specification at 6:29-7: 14) noted by the Examiner on page
9 of the Final Office Action, the Specification describes the
process by which the intermediary server establishes a
connection session between the customer device and a content
supplier. The content supplier further requests that the customer
provide registration details via the established connection. (Id.)
In the following paragraph, the Specification explicitly
discloses that the registration details provided by the customer
are stored in a "record including the unique DVD identifier and
content owner identifier." (Id., 7:15-18.) Therefore, not only
does the Specification indicate that the customer details recited
in claim 7 are linked to the recordable medium identifier (e.g.,
unique DVD identifier) by virtue of being stored in the same
record, but also the Specification indicates that customer details
are linked to a specific content owner.
App. Br. 16-17.
Appellant's arguments point to paragraphs 61---62 as supporting the
argued limitation of claim 7. Our review of paragraphs 61---62 does not find
5
Appeal2018-001032
Application 10/522, 146
sufficient support in these paragraphs to show "the requesting recordable
medium identifier matches the registered recordable medium identifier as
being linked to the customer details" as recited in claim 7. However, we
also review paragraph 60 and we conclude that together paragraphs 60-62
do provide the required sufficient written description. Particularly,
paragraph 60 states:
[T]he consumer then proceeds to register as the owner of the
DVD. At step 42, a request for registration of the DVD is
transmitted from the personal computer 20 to the retailer server
24. Upon receipt of that request, the retailer server acts, at step
43, to read the unique DVD identifier encoded on the DVD.
The Examiner's rejection does not consider paragraph 60. See Ans. 22.
Therefore, consistent with Appellant's arguments as to claim 7 and our
review of paragraph 60, we conclude there is insufficient articulated
reasoning to support the Examiner's conclusion that claim 7 fails to comply
with the written description requirement.
B. Section 103 Argument
1.
Appellant raises the following arguments in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
The Examiner relies on paragraphs 41 and 42 of Kutaragi
to allegedly teach the claimed intermediary server. (See Final
Office Action dated August 2, 2016 at p. 11 ("Final Office
Action").) However, the Examiner's theory is incorrect because
Kutaragi' s verification server does not identify the destination
content supplier server based on the recordable medium being
read by the customer device, as required by claim 1.
As explained by paragraph 42 ofKutaragi, the verification
server 4 in Kutaragi's FIG. 1 (reproduced below) identifies a
6
Appeal2018-001032
Application 10/522, 146
content server, e.g., content server 6-1, based on a user's
selection of online service, not based on the "recordable medium
currently being read by the customer device" as claimed. For
example, as shown in Kutaragi's FIG. 3 and described in
paragraphs 42 and 61-64, the user can select a variety of online
services which are each associated with different online content
servers. (See also Response dated March 22, 2016 at pp. 11-12.)
App. Br. 8 ( emphasis added).
[The Examiner also] cites paragraph 30 of Kutaragi to allegedly
teach the claimed intermediary server.
Paragraph 30 of Kutaragi discloses that, in the event a
computer requests data, a server obtains from the computer a
"status relating to said at least one of programs and data based
on a unique ID given to said recording medium." Then,
according to the status, the server prepares the requested data,
which is transmitted to the computer. (Kutaragi, ,r 30.) The
Examiner characterizes this disclosure as indicating that
Kutaragi' s verification server transmits data to the recording
medium based on the unique ID of the recording medium. (See
Final Office Action at p. 3.) Regardless of whether the
Examiner's characterization of Kutaragi is accurate,
transmitting content based on the unique ID does not teach or
suggest "identifying by the intermediary server one of the
plurality of content suppliers that is associated with the
recordable medium being read by the customer device," as
recited in claim 1.
App. Br. 8-9 ( emphasis added).
At most, Kutaragi discloses that the various information such as
disk IDs are used by "verification server 4" for the purpose of
"managing verification," which simply does not disclose or
suggest "identifying by the intermediary server one of the
plurality of content suppliers that is associated with the
recordable medium being read by the customer device," as
claimed.
Reply Br. 3--4.
7
Appeal2018-001032
Application 10/522, 146
Kutaragi explicitly states that "verification server 4 connects to
the content server 6 corresponding to the service which the
user has selected ... The verification server 4 centrally manages
the content servers 6 of the corporations cooperating with this
business model, and accordingly establishes a connection with
the content server 6 of the corporation providing the service
based on the service selected by the user." (See Kutaragi at
,r 115 ( emphasis added).) Thus, as previously explained,
Kutaragi teaches selecting a server based on a user's selected
service, not based on a recordable medium, as claimed. Nowhere
does Kutaragi indicate that identification of a content server is
based on device IDs.
Reply Br. 3--4 ( emphasis added).
As to Appellant's contentions regarding claim 1, we disagree. First,
the "identify the destination content supplier server based on the recordable
medium being read by the customer device" language ( emphasis added),
which Appellant repeatedly argues, is not found in claim 1. Rather, claim 1
recites, "identifying by the intermediary server one of the plurality of
content suppliers that is associated with the recordable medium being read
by the customer device." The actual claim limitation states a result
accomplished by the intermediary server, but does not limit how that result
is accomplished.
Second, even if the claim explicitly recited the "how" as "based on,"
contrary to Appellant's argument, we conclude Kutaragi's "transmitting
content based on the unique ID" and "managing verification" (which
Appellant acknowledges above) are more than sufficient to suggest a claim
limitation of identifying by an intermediary server a destination content
supplier server based on the recordable medium being read by a customer
device. Also, Appellant's argument, that Kutaragi' s (i-f 115) "a user
8
Appeal2018-001032
Application 10/522, 146
selecting a service" precludes identifying based on the recording medium, is
contradicted by Kutaragi at paragraph 11 7 where status data is checked
before a full connection is established.
2.
Appellant also raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
Kutaragi also fails to teach or suggest that the "intermediary
server maintains a data table that identifies content suppliers
associated with different recordable media as well as IP
addresses of content suppliers," as recited in claim 1. (Emphasis
added.) It is unsurprising that the Examiner does not cite to any
portion of Kutaragi to teach or suggest this claimed "data table"
feature because nowhere does Kutaragi teach or suggest that its
verification server maintain any data tables, much less a data
table that identifies content suppliers as claimed. Further, as
discussed above, Kutaragi's verification server selects a specific
content server based on a user's selection of services. Therefore,
the verification server does not, and has no reason to, maintain
any data table that identifies different content suppliers
associated with different recordable media as well as IP
addresses of the content suppliers.
App. Br. 10 ( emphasis added).
We are unpersuaded by Appellant's above contention. First, Kutaragi
is explicit that its verification server uses data tables in the form of a
database.
The verification server 4 has a user database 5.
Accumulated in this user database 5 are at least disk IDs that are
unique IDs given to the respective optical disks 2. Further, as
desired, device ID (SET ID) information of unique IDs given to
each of the entertainment apparatus main units 1, user ID (USER
ID) information (which may include passwords) of unique IDs
given to each of the users, and so on are accumulated in the
database 5. What is accumulated in the database is, however, not
9
Appeal2018-001032
Application 10/522, 146
limited to the illustrated data. These data are referred to as user
information herein. Thus, a verification system for verifying each
individual disk can be realized, as described hereinafter.
Kutaragi ,r 4 3.
Second, that the database may include the content providers and their
IP locations is suggested by Kutaragi at paragraph 120 (emphasis added).
In step S408, the verification server 4 registers and
manages in the user database 5, data relating to the processing
between the verification server 4 and the entertainment apparatus
main unit 1 and content server 6.
The Examiner was correct to conclude Kutaragi and AARA render obvious
an intermediary server maintaining a data table that identifies content
suppliers associated with different recordable media as well as IP addresses
of those content suppliers. See Ans. 18-20.
3.
Appellant further raises the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
The Examiner relies on paragraphs 88 and 118-119 of
Kutaragi to allegedly teach or suggest the claimed authentication.
(See Final Office Action at pp. 6 and 12.) The Examiner's
reliance, however, is incorrect because none of these cited
paragraphs teach or suggest that a content supplier that
authenticates the recordable medium and the customer "in
response to receiving a forwarded request" from an
intermediary server as claimed.
App. Br. 11 ( emphasis added).
As discussed above, Kutaragi discloses a verification
system where all the information including "the disk ID of the
disk used by the user, the device ID of the apparatus main unit 1,
and the user ID and other user information are all centrally
managed by the varication [sic] server 4." (Kutaragi, ,r 120.)
10
Appeal2018-001032
Application 10/522, 146
Kutaragi further explains that the benefit of managing data and
verification at the verification alone while communicating
minimal data with the content server is increased system
security: "Thus, personal information of users can be prevented
from leaking, and the security of the present system is increased."
(Id.) In fact, in addition to failing to disclose a content server for
performing authentication as claimed, Kutaragi thus teaches
[away] from content servers that each individually perform
authentication.
In contrast to the verification system contemplated by
Kutaragi, the present Specification contemplates a verification
system where the recordable medium is associated with specific
content suppliers. For example, data representative of a content
owner identifier among other identifiers (e.g., a manufacturer
identifier or a DVD identifier) are embedded a recordable
medium such as a DVD. (See Specification at 5:8-11.)
Therefore, the authentication process may be distributed across
multiple content suppliers. A person of ordinary skill in the art
would therefore appreciate that system architecture and
distribution of computing processes, e.g., the claimed
authentication, is not a mere matter of design choice.
App. Br. 14 ( emphasis added).
We are unpersuaded that the Examiner erred based on Appellant's
above contention. We agree with Appellant that Kutaragi discloses
performing centralized verification to get the benefit of better personal
information security. Kutargi ,r 120. Also, within this disclosure
highlighted by Appellant, is an implicit assertion by Kutaragi that
decentralized verification is not as secure. Although we agree with
Appellant that Kutaragi discloses performing centralized verification, we
find Appellant's teach away conclusion unpersuasive. That a decentralized
verification is not as secure, is not a teaching away. As the United States
Court of Appeals for the Federal Circuit has counseled:
11
Appeal2018-001032
Application 10/522, 146
A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.
... [I]n general, a reference will teach away if it suggests that the
line of development flowing from the reference's disclosure is
unlikely to be productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). "A reference does not teach
away, however, if it merely expresses a general preference for an alternative
invention but does not criticize, discredit, or otherwise discourage
investigation into the invention claimed." DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quotation
omitted).
Also, we find unpersuasive Appellant's assertion that using a
centralized computing process versus a decentralized computing process is
not a matter of design choice. Rather, we conclude it is the epitome of a
design choice in the field of networked computing. We tum to the Microsoft
Press Computer Dictionary4, which states the term "centralized processing"
means:
The location of computer processing facilities and operations in
a single ( centralized) place. Compare decentralized processing,
distributed processing.
The Microsoft Press Computer Dictionary further states as to the term
"decentralized processing" means:
The distribution of computer-processing facilities and operations
in more than one location.
4 Microsoft Press 1991.
12
Appeal2018-001032
Application 10/522, 146
CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claim 7 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
(2) The Examiner has not erred in rejecting claims 1-10, 12-20, and
23 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1-10, 12-20, and 23 are not patentable.
DECISION
The Examiner's rejection of claim 7 under 35 U.S.C. § 112, first
paragraph, is reversed.
The Examiner's rejections of claims 1-10, 12-20, and 23 as being
unpatentable under 35 U.S.C. § 103(a) are affirmed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed.
See 37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
13