Ex Parte Peterson et al

Patent Trial and Appeal Board

Oct 18, 2016

13460233 (P.T.A.B. Oct. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/460,233 04/30/2012
103807 7590 10/20/2016
Intellectual Property Venture Group
3350 Shelby St., Ste. 200
Ontario, CA 91764-5556
FIRST NAMED INVENTOR
Harold L. Peterson
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.
60843.300701 2000
EXAMINER
OBEID, MAMON A
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
10/20/2016 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):
pfiler@ipvglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAROLD L. PETERSON and JAMES B. WILLIAMS
Appeal2014--004810
Application 13/460,233
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING, and
MATTHEWS. MEYERS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Harold L. Peterson and James B. Williams (Appellants) seek review
under 35 U.S.C. § 134 of a final rejection of claims 1-35, the only claims
pending in the application on appeal. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed September 23, 2013) and Reply Brief ("Reply Br.," filed February
24, 2014), and the Examiner's Answer ("Ans.," mailed December 24, 2013),
and Final Action ("Final Act.," mailed July 19, 2013).
Appeal2014-004810
Application 13/460,233
The Appellants invented a way of implementing marketing functions of
vending and delivery of digital content. Specification 1: 15-17.
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 system for marketing digital content to a user on an
electronics device, comprising:
[ 1] a storage media installed in the electronics device;
[2] said storage media containing an inventory of assets
that are instances of the digital content
and
which are each protected from unauthorized use by a
digital wrapper;
[3] a logic in the electronics device to:
[ 4] display information about said inventory to the user;
[5] accept a selection by the user of a particular said
asset;
[ 6] transmit
a payment for said selection
and
an identifier associated with said selection
to a clearing house;
[7] receive a first key from said clearing house;
[8] transmit said first key to a master server;
[9] receive a second key from said master server;
and
[10] with said second key
unwrap said digital wrapper protecting said
selection.
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Application 13/460,233
The Examiner relies upon the following prior art:
Subler us 5,646,992 Jul. 8, 1997
Hurley us 5,984,508 Nov. 16, 1999
Yoshida us 6,075,862 Jun. 13,2000
Martin US 6,397,189 Bl May 28, 2002
Peterson US 2012/0179611 Al Jul. 12, 2012
Claim 1 stands rejected under the judicially created doctrine of
obviousness type double patenting as claiming the patentably
indistinguishable subject matter as another U.S. Patent.
Claims 1-7 and 23-25 stand rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention. 2
Claim 20 stands rejected under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the invention.
Claims 1, 4--20, 25, 30, and 35 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Subler and Yoshida. 3
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Subler, Yoshida, and Hurley.
2 Rejections of claims 6, 25, 30, and 35 under 35 U.S.C. § 112, second
paragraph are withdrawn. Ans. 3.
3 Claims 25, 30, and 35 are included and claim 3 is not included in the
analysis of this rejection although the initial statement of statutory rejection
recites otherwise. Final Act. 9 and 13.
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Application 13/460,233
Claims 21-24, 26-29, and 31-34 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Subler, Yoshida, and Martin.
ISSUES
The issues of indefiniteness tum primarily on whether the Specification
supports the recited means plus function. The issues of obviousness tum
primarily on whether the structural claims have the recited structure and the
capacity to perform the recited functions, and on whether the art describes
the recited clearinghouse as to the process claims.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of "key."
Facts Related to the Prior Art
Subler
02. Subler is directed to assembly, distribution, and use of digital
infonnation. Subler 1 :5---6.
03. Subler describes controlling access to a subset of items
arbitrarily selected from among a larger set of items of digital
information. Each of the items belonging to the set are encrypted
using an encryption key which is unique among the items
belonging to the set. A decryption key is provided which is
sufficient to permit decryption of the items belonging to the
arbitrarily selected subset of items. The encryption keys are
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Application 13/460,233
associated with corresponding decryption keys, which are
themselves encrypted using a single global encryption key (the
decryption key mentioned above) that is independent of the
composition of the arbitrarily selected subset. A request by the
user (e.g., an order) for access to the items belonging to the subset
incorporates a request encryption key based on information unique
to the request. The request encryption key has an associated
request decryption key. The global decryption key is encrypted in
accordance with the request encryption key and decrypted in
accordance with the request decryption key. The information
unique to the request comprises information associated with the
computer. The larger set of items is recorded on a high-capacity
random access storage medium and the decryption keys are also
recorded on the medium. The decryption keys are encrypted prior
to recording on the medium. Subler 2:20-46.
04. Subler describes generating and sending a purchase order to an
order taking system, to receive back an acknowledgment of the
order, to "unlock" the order items, and to install them on the
workstation. The purchase order indicates which of the valued
items (or groups of valued items) the user wishes to order. The
order may also include information which is unique to the
particular workstation being used and assures that the
acknowledgment returned in response to the order will permit use
of the items only on the particular workstation. Subler 4:51-64.
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05. Subler describes that executable program with library files, as
well as the supporting data, are written to the CD-ROM or similar
media. Subler 6:50-61.
06. Subler describes that the actual key file decryption key is not
included on the CD-ROM but rather is obtained by the end user as
part of the process of ordering and paying for use of selected
valued items. Subler 9:59---62.
Yoshida
07. Yoshida is directed to a decryption key management scheme for
managing a decryption key for decrypting an encrypted software
in a software distribution system. Yoshida 1 :7-9.
08. Yoshida describes a case of installing the encrypted software
acquired from the software vender, either by a communication
through the communication network or by a purchase of the
recording medium such as CD-ROM, into the personal computer
of the user by the software content acquisition unit, in which the
decryption key acquisition unit retrieves the decryption key for
this software from the decryption key and software content
memory unit by using the software ID of this software as a
retrieval key. This decryption key acquisition unit corresponds to
functions of the decryption key retrieval program, the
communication program, and the decryption key storing program
of the installer or the decryption key management system. When
the corresponding decryption key is found, the retrieved
decryption key is used to decrypt the encrypted software, whereas
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when the corresponding decryption key is not found, the
decryption key acquisition unit acquires the corresponding
decryption key from the software vender through the
communication network, and stores the acquired decryption key
and the software ID in correspondence in the decryption key and
software content memory unit. Then, the encrypted software
content is decrypted by using the obtained decryption key and
installed into the decryption key and software content memory
unit by the software content acquisition unit. This software
content acquisition unit corresponds to functions of the decryption
and install program of the installer or the decryption key
management system described above. Yoshida 8 :40-67.
09. Yoshida describes executing the communication program of the
installer to carry out the decryption key acquisition processing,
when the appropriate decryption key does not exist in the
decryption key memory unit. Namely, the decryption key request
message having a data structure, as shown in Fig. 2, is sent from
the personal computer of the user to the software vender through
the communication network, and a prescribed procedure for
paying the software usage charge is carried out. After that, the
decryption key is sent from the software vender to the personal
computer of the user through the communication network. Here,
when the personal computer of the user is not connected with the
communication network, the communication program urges the
acquisition of the decryption key to the user by means of a screen
display of a message indicating a need to acquire the decryption
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key, a telephone number of the software vender, and other
necessary information. The decryption key acquired from the
software vender is then stored into the decryption key memory
unit in correspondence with the software ID by the decryption key
storing program of the installer. Then, the software content to be
installed is decrypted by the acquired decryption key, and installed
into the hard disk (or the decryption key and software content
memory unit or the software content memory unit) (step S15). At
this point, in a case of using the decryption key management
system instead of the installer, whether the software content to be
installed is already acquired or not can be checked, and if not, the
user can be urged to acquire the software content to be installed.
Yoshida 11:21-50.
Hurley
10. Hurley is directed to software that is provided other than by
purchase or license of packaged software stored on a physical
medium, such as electronically distributed software, i.e. software
that is delivered to the customer electronically, rather than through
physical distribution methods. Hurley 1 :9-16.
11. Such software can be downloaded from digital data networks
such as the Internet, on compact disk read only memory (CD
ROM) or floppy, come pre-installed on the hard drive of a
computer system, or through broadcast media. Software
distributed in such ways other than purchase of the particular
packaged software stored on a physical medium is typically
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provided as a demo copy which can be "unlocked" to give the
customer the features of the full product. Hurley 1: 16-23.
Martin
12. Martin is directed to a system including one or more computer
jukeboxes that can be managed from a remote location. Martin
1:15-18.
13. Martin describes monitoring each jukebox to determine the
number of times each song has been played. From these numbers,
the central management system can calculate the royalty payments
that are due. More importantly, the central management system
can identify those specific songs which need to be replaced in
each jukebox on an individual basis, the central management
system communicating replacement songs to each jukebox to
update the available music selection therein as needed. Martin
3:2-11.
14. Martin describes replacing or updating specific song files.
Martin 5:43-6: 10.
ANALYSIS
Claim 1 rejected under the judicially created doctrine of obviousness type
double patenting as claiming the patentably indistinguishable subject matter
as another U.S. Patent
The Examiner withdrew the rejection against U.S. Pat. No. 8,126,812.
Advisory Action mailed August 13, 2013. Appellants do not argue the
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remaining rejection against copending U.S. Pat. Appl. 13/331,735. That
application was abandoned July 15, 2013, however, and the rejection is
therefore moot.
Claims 1-7 and 23-25 rejected under 35 U.S. C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the invention
The Examiner withdrew this rejection. Advisory Action mailed August
13, 2013.
Claim 20 rejected under 35 U.S. C. § 112, second paragraph, as failing to
particularly point out and distinctly claim the invention
We are persuaded by Appellants' argument that Appellants have pointed
to those portions of the Specification that support the structure identified by
the various means plus function recited. App. Br. 18-21and13-15.
Claims 1, 4-20, 25, 30, and 35 rejected under 35 U.S.C. § 103(a) as
unpatentable over Subler and Yoshida
Claims 1-13 and 20-30 are directed to machines or articles of
manufacture and claims 14--19 and 31-35 are directed to processes.
As to structural inventions, such claims must be distinguished from the
prior art in terms of structure rather than function, see, e.g., In re Schreiber,
128 F.3d 1473, 1477-78 (Fed. Cir. 1997). In order to satisfy the functional
limitations in an apparatus claim, however, the prior art apparatus as
disclosed must be capable of performing the claimed function. Id. at 1478.
When the functional language is associated with programming or some other
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structure required to perform the function, that programming or structure
must be present in order to meet the claim limitation. Typhoon Touch
Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011) (discussing
Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d
1367 (Fed. Cir. 2008)). In some circumstances generic structural disclosures
may be sufficient to meet the functional requirements, see Ergo Licensing,
LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1364 (Fed. Cir. 2012) (citing
Telcordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376-77 (Fed. Cir.
2010)).
Also, a structural invention is not distinguished by the work product it
operates upon, such as data in a computer. "[E]xpressions relating the
apparatus to contents thereof during an intended operation are of no
significance in determining patentability of the apparatus claim." Ex parte
Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, "inclusion of
material or article worked upon by a structure being claimed does not impart
patentability to the claims. " In re Otto, 312 F .2d 937, 940 (CCP A 1963).
As to both structural and procedural claims that recite labeled data,
labels per se are undeserving of patentable weight. Nothing in the claim
depends on or enforces the perceptual labels the claim suggests. Mental
perceptions of what data represents are non-functional and given no weight.
King Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010)
("[T]he relevant question is whether 'there exists any new and unobvious
functional relationship between the printed matter and the substrate.'")
(citations omitted). See also In re Lowry, 32 F.3d 1579, 1583
(Fed.Cir.1994) (describing printed matter as "useful and intelligible only to
the human mind") (quoting In re Bernhart, 417 F.2d 1395, 1399 (CCPA
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1969)). Data labels are just examples of such mental perceptions. Data,
being a succession of binary digits, are just those digits, not perceptual labels
of those digits. The binary digits may impose some functional consequence,
but absent some recitation of how so, such consequence is not an issue.
We are not persuaded by Appellants' argument that Subler fails to
describe transmitting a payment and identifier in limitation [6]. App. Br.
23-24. As to the argument that these particular words are not used, this is
not required. "The specific limitation need not be disclosed in haec verba in
the reference." Application of Bode, 550 F.2d 656, 660 (1977). See also In
re Pappas, 214 F2d 172, 176 (CCPA 1954) (Publication is sufficient
anticipation if it teaches same inventive concept as application; it need not
describe invention in same terms as application.) Further, again, such labels
for data that is not used later in the claim are undeserving of weight.
Appellants' similar arguments regarding other claim terms that differ
from the art reference terms are unpersuasive for the same reasons.
The Examiner finds that the fact that Subler describes generating a
purchase order that describes what is ordered. Final Act. 9. Such a
description is itself an identifier. As cash payment is a notoriously well-
known form of payment, the purchase order implies sending payment as
well, when cash payment is used. Further, Subler also separately describes
paying in the same sequence as ordering.
We are not persuaded by Appellants' argument that Yoshida' s key
retrieved from the vendor is not a second key used to unwrap the digital
wrapper. App. Br. 29-30. Examiner finds that Yoshida describes sending
the software ID, which the Examiner analogizes to the first key, to a vendor.
As the Disclosure does not define a key and the claims do not narrow the
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first key, an identifier that is used to obtain the second key is within the
scope of a key in that the ID unlocks sending of the second key. The vendor
then sends a decryption key for decrypting (which the Examiner analogizes
to unwrapping) the software. Final Act. 10-11. Yoshida explicitly recites
this.
As to the limitation that the intermediary between the two keys is a
clearinghouse, this is given no weight in the structural claims because the
structural claims are directed to a single electronic device (claims 1 and 8)
and a single client means (claim 20), that each has the capacity to use any
external machine, including a clearinghouse computer, as a target for its
payment and identifier transmission and source for first key. Thus, these
claims recite no more than using the machine of Subler and Yoshida
connected to some external system not described by those references, but
that is outside the scope of the structural limitations.
We are persuaded by Appellants' argument that this limitation is
dispositive as to the method claims, however. The references do not
describe using a clearinghouse and the Examiner does not make findings
otherwise.
As to separately argued claims 4 and 5, reciting the system instructions
are stored on fixed, primary media, we are not persuaded by Appellants'
argument that the references fail to describe this. App. Br. 31-32. As the
Examiner finds, Subler describes storing the system on the user's computer,
which almost invariably is fixed and the primary repository for storage.
Ans. 20-21. Even if Subler did not explicitly state this, the use of fixed,
primary storage is so notoriously well-known and practiced it must
necessarily have been a predictable implementation to one of ordinary skill.
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As to separately argued claims 6 and 12, reciting the asset is an
executable software that is pre-configured to run from said storage media
once unwrapped, we are not persuaded by Appellants' argument that the
references fail to describe this. App. Br. 32-33. Subler explicitly describes
adding the executable file to the CD-ROM that is then encrypted.
Claims 2 and 3 rejected under 35 U.S.C. § 103(a) as unpatentable over
Subler, Yoshida, and Hurley
These claims recite when the files are stored locally, viz. at time of
manufacture or later as an upgrade. We are not persuaded by Appellants'
argument that Hurley fails to describe this. App. Br. 33-35. Hurley
explicitly describes such software being either installing such software
initially (time of manufacture) or downloading later (upgrade).
Claims 21-24, 26--29, and 31-34 rejected under 35 U.S.C. § 103(a) as
unpatentable over Subler, Yoshida, and Martin
Claims 31-34 depend from claim 14, whose rejection we do not sustain
supra. The remaining claims recite updates to the inventory, such as the
executable programs. We are not persuaded by Appellants' argument that
jukeboxes are not within the field of the inventor's endeavor. App. Br. 35-
38. Subler is directed to distribution of digital information and Martin is
directed to the distribution of some subset of such information. Thus, one of
ordinary skill would have been led to Martin from Subler to discover the
scope of how such distribution would be expected to occur. Similarly, the
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claims are directed to adding to an inventory of digital files, which Martin
also describes.
We are not persuaded by Appellants' argument that a combination of the
references would not be suitable for any of the references individually. App.
Br. 3--40.
"The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference ... Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art." In re
Keller, 642 F.2d 413, 425, (CCPA 1981). See also In re Sneed, 710 F.2d
1544, 1550, (Fed. Cir. 1983) ("[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review."); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining
the teachings of references does not involve an ability to combine their
specific structures.").
The Examiner did not apply Yoshida and Martin to be physically
incorporated, but to show that certain practices were known to those of
ordinary skill in the programming and data distribution arts.
We are not persuaded by Appellants' argument that Martin fails to
describe a user profile used for updates. The claim does not further narrow
the implementation for such a user profile and Martin explicitly maintains a
profile of the music users played that is used to identify songs that need to be
replaced. As to the recited unique indicia, the claims do not recite how such
indicia are used, or even that they are used. In any event, some indicia are
necessarily employed for Martin to determine which machine is being
updated.
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CONCLUSIONS OF LAW
The rejection of claim 1 under the judicially created doctrine of
obviousness type double patenting as claiming the patentably
indistinguishable subject matter as another U.S. Patent is mooted by the
abandonment of the application against which the claim was compared.
The rejection of claims 1-7 and 23-25 under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the
invention is withdrawn by the Examiner.
The rejection of claim 20 under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the invention is
improper.
The rejection of claims 1, 4--13, 20, 25, and 30 under 35 U.S.C. § 103(a)
as unpatentable over Subler and Yoshida is proper.
The rejection of claims 14--19 and 35 under 35 U.S.C. § 103(a) as
unpatentable over Subler and Yoshida is improper.
The rejection of claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable
over Subler, Yoshida, and Hurley is proper.
The rejection of claims 21-24 and 26-29 under 35 U.S.C. § 103(a) as
unpatentable over Subler, Yoshida, and Martin is proper.
The rejection of claims 31-34 under 35 U.S.C. § 103(a) as unpatentable
over Subler, Yoshida, and Martin is improper.
DECISION
The rejection of claims 1-13 and 20-30 is affirmed.
The rejection of claims 14--19 and 31-35 is reversed.
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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED-IN-PART
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