Ex Parte Yamanaka et al

Board of Patent Appeals and Interferences

Oct 30, 2009

09729866 (B.P.A.I. Oct. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HIDEAKI YAMANAKA, TERUHIKO MORIYAMA
and KATSUAKI KIKUCHI

____________

Appeal 2009- 006239
Application 09/729,866
Technology Center 3600
____________

Decided: October 30, 2009
____________

Before, MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI and BIBHU
R. MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 2-19. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). An Oral Hearing was held on October 20, 2009.

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellants claim a system and method for a digital content billing in
which digital content such as, music files, video files and game software
titles, is downloaded to a plurality of users through networks and a billing
for each downloaded digital content is performed according to the number of
execution times of the downloaded digital content. (Specification 1:6-12)
Claim 2, reproduced below, is representative of the subject matter on
appeal.

2. A digital content billing system using a network, comprising:
a holder having digital content, which is set to become usable by an
execution key, and holding a right to let a user use the digital content;
a distributor server obtaining the digital content from the holder and
distributing the digital content to a user;
an advertiser possessing an advertising information piece to be provided for
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the user;
and
an administrator server obtaining the execution key from the holder, obtain
the advertising information piece from the advertiser, receiving an execution
declaration of the digital content from the user, downloading the advertising
information piece and the execution key to the user through the network,
collecting an advertisement rate from the advertiser that corresponds to the
number of execution times of the digital content used by the user, and
paying an execution fee to the holder that corresponds to the number of
execution times of the digital content.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Reilly 5,740,549 Apr. 14, 1998
Merriman 5,958,061 Sep. 7, 1999
Abecassis 2001/0041053 A1 Nov. 15, 2001
Nagano PCT/JP00/01903 May 29, 2002
Maari 2004/0073451 A1 Apr. 15, 2004

The following rejections are before us for review.
The Examiner rejected claims 2, 5-8, and 17-191 under 35 U.S.C.

1 The Examiner’s rejection does not list claims 17 and 18 as part of any
grouping of claims rejected under 35 U.S.C. § 103(a), but a reading of the
detailed rejection on pp 13 -14 of the Answer indicates that these claims are
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§ 103(a) as unpatentable over Maari in view of Nagano.
The Examiner rejected claims 3-4, 9-11, and 14-16 under 35 U.S.C.
§ 103(a) as unpatentable over Maari in view of Nagano and further in view
of Reilly.
The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Reilly in view of Nagano and further in view of
Abecassis.
The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as
unpatentable over Maari in view of Nagano and further in view of
Merriman.
ISSUE
Have Appellants shown that the Examiner erred in rejecting claims 2,
5-8, and 17-19 under 35 U.S.C. § 103(a) as unpatentable over Maari in view
of Nagano on the grounds that a person with ordinary skill in the art would
understand that Maari and Nagano show all the claimed elements, and thus it
would be a predictable result to use the teaching of Nagano of deriving
revenue from advertisers to pay for content in Maari?
PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the

in fact rejected under 35 U.S.C. § 103(a) over Maari and Nagano.
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invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Examiner found that Maari discloses with respect to the
independent claims all the recited elements but “… does not teach an
advertiser possessing an advertising information piece to be provided for the
user; obtain the advertising information piece from the advertiser; and
collecting an advertisement rate from the advertiser that corresponds to the
number of execution times of the digital content used by the user.”
(Answer 5)
2. The Examiner however found that:
Nagano teaches an advertiser possessing an
advertising information piece to be provided for
the user; obtain the advertising information piece
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from the advertiser (Nagano, Fig. 1, Advertising
Data Input Device (10) and Advertising Data
Database (14) Paragraph [0019], [023] and
[0024]); and collecting an advertisement rate from
the advertiser….
(Answer 6)
3. The Examiner thus found that “it would be obvious to one of
ordinary skill in the art at the time the invention was made to include an
advertiser possessing an advertising information piece” to the content of
Maari.” (Answer 6)
4. Maari at ¶[0071] discloses:
The administration center 211 encodes and
compresses the distributed content according to a
predetermined compressing scheme and attaches,
to this encoded and compressed content, the ID of
this content (the content ID), proprietor
information such as copyright holder, the amount
of fee to be billed when this content is used, and
the name of the virtual store that supplies this
content to the user 200.
5. Nagano at ¶[0026] discloses:
The system 10 is also provided with (1) an advertising-data
identification/counting device 19, for identifying each
advertisement displayed on the display device 18 in response to
mouse clicks by the user and for counting the number of times
each advertisement is clicked (in other words, the number of
times the data is displayed), (2) an advertising-fee
calculation/notification device 20, for calculating advertising
fees based on the number of times each advertisement is
clicked, as counted by the advertising-data
identification/counting device 19, and for notifying the
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corresponding sponsors of the advertising fees periodically or
with each access request.

6. Nagano discloses tying the transmitted advertising to the content of
a user’s personal data such that the advertising data conforms with the
registered user’s personal data e.g., hobbies, interests. [0033]

ANALYSIS
We affirm the rejections of claims 2-19.
Initially, we note that the Appellants argue independent claims 2, 17
and 19 together as a group. Correspondingly, we select representative claim
2 to decide the appeal of these claims, remaining independent claims
standing or falling with claim 2.
Claim 2 recites collecting an advertisement rate from the advertiser
that corresponds to the number of execution times of the digital content used
by the user.
The Examiner found that Maari discloses with respect to the
independent claims all the recited elements, but “… does not teach an
advertiser possessing an advertising information piece to be provided for the
user; obtain the advertising information piece from the advertiser; and
collecting an advertisement rate from the advertiser that corresponds to the
number of execution times of the digital content used by the user.” (FF 1)
The Examiner however found that “Nagano teaches an advertiser
possessing an advertising information piece to be provided for the user;
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obtain the advertising information piece from the advertiser; and collecting
an advertisement rate from the advertiser….” (FF 2)
The Examiner thus found that “it would be obvious to one of ordinary
skill in the art at the time the invention was made to include an advertiser
possessing an advertising information piece” to the content of Maari. (FF 3)
Appellants argue however that:
[t]he cited art to Nagano only discloses providing a
payment based on a number of times that a user
accesses an advertisement, and not digital
content to which an advertisement is added.
That is, in the claims as written advertisements are
added to digital content that can be provided to a
user. In the claimed invention, the number of times
the digital content is executed is then counted and
an advertiser is billed for those number of times. In
the claimed invention, the advertiser is not billed
based on the number of times an advertisement
is clicked on or executed, but instead is billed
based on the number of times digital content to
which advertisement is added is executed.
(Appeal Br. 6)
We disagree with Appellants because the Appellants are attacking the
Nagano reference individually when the rejection is based on a combination
of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re
Young, 403 F.2d 754, 757-58 (CCPA 1968). That is, the Examiner relies on
Nagano only for the general teaching of obtaining revenues from an
advertiser. (FF 2, 5) Further, we found that Maari discloses billing for
content based on when this content is used. (FF 4) Nagano discloses tying
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the transmitted advertising to the content of a user’s personal data such that
the advertising data conforms with the registered user’s personal data, e.g.,
hobbies, interests. (FF 6)
Thus, we find that Maari and Nagano show all the claimed elements.
There is no evidence of unpredictable results. Under these circumstances,
we find that it would be a predictable result to use the teaching in Nagano of
deriving revenue from advertisements to pay for content in Maari since
Maari discloses paying for the content based on use (FF 4) which, when
taken in combination with Nagano, would correspond to the concurrent
viewing of content with an advertisement. “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398 1739 (2007).
Appellants do not provide a substantive argument as to the separate
patentability of remaining dependent claims that depend from claims 2, 17
and 19, which are the sole independent claims among those remaining
claims. Therefore, we also affirm the rejection of claims 3-16, and 18.

CONCLUSIONS OF LAW

We conclude the Appellants have not shown that the Examiner erred
in rejecting claims 2, 5-8, and 17-19 under 35 U.S.C. § 103(a) as
unpatentable over Maari in view of Nagano.
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We conclude the Appellants have not shown that the Examiner erred
in rejecting claims 3-4, 9-11, and 14-16 under 35 U.S.C. § 103(a) as
unpatentable over Maari in view of Nagano and further in view of Reilly.
We conclude the Appellants have not shown that the Examiner erred
in rejecting claim 12 under 35 U.S.C. § 103(a) as unpatentable over Reilly in
view of Nagano and further in view of Abecassis.
We conclude the Appellants have not shown that the Examiner erred
in rejecting claim 13 under 35 U.S.C. § 103(a) as unpatentable over Maari in
view of Nagano and further in view of Merriman.

DECISION
The decision of the Examiner to reject 2-19 is AFFIRMED.

MP

OBLON, SPIVAK, MCCLELLAND MAIER &NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA VA 22314