Ex Parte 5,475,585 et al

Patent Trial and Appeal Board

Dec 26, 2013

90011791 (P.T.A.B. Dec. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/011,791 07/18/2011 5,475,585 R3111607 1039
40401 7590 12/26/2013
Hershkovitz & Associates, PLLC
2845 Duke Street
Alexandria, VA 22314
EXAMINER
KE, PENG
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
12/26/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Olympic Developments AG, LLC
Patent Owner and Appellant
____________

Appeal 2013-010936
Reexamination Control 90/011,791
Patent US 5,475,585
Technology Center 3900
____________

Before HUBERT C. LORIN, RICHARD M. LEBOVITZ, and
BRETT C. MARTIN, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
Patent Owner, Olympic Developments AG, LLC, appeals from the
Patent Examiner’s rejections of claims 1-3, 5-9, 21-23, and 28-30 in the
above-identified ex parte reexamination of US 5,475,585. The Board’s
jurisdiction for this appeal is under 35 U.S.C. §§ 6(b), 134(b), and 306. We
affirm-in-part.
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I. STATEMENT OF CASE
This appeal involves US 5,475,585 (“the ‘585 patent”) which issued
December 12, 1995. Under 35 U.S.C. §§ 301-307 and 37 C.F.R. § 1.510, a
Request for Ex Parte Reexamination of the ‘585 patent was submitted on
behalf of third-party requester, Sony Computer Entertainment America LLC
and Sony Electronics Inc. (collectively “Requester”), on July 11, 2011. The
real party in interest in this ex parte reexamination proceeding is the Patent
Owner, Olympic Developments AG, LLC (Appeal Br. 1, dated December 3,
2012).
Patent Owner states that the ‘585 patent is the subject of litigation
proceedings in various district courts (Appeal Br. 3). The proceedings were
stayed, but we have not been informed of their current status.
The claimed subject matter pertains to a “transactional processing
system for purchasing products and services from a plurality of available
products and services and processing corresponding financial transactions in
real-time” and corresponding methods. (Claim 1.) The claims comprise a
programming transmitter, receivers, and a transaction processor. The
transmitter broadcasts menus to a receiver (‘585 patent, col. 1, l. 56 to col. 2,
l. 2). The purchaser uses the menu(s) to select and purchase a product or
service (id. at col. 1, ll. 56-67). The receiver is linked to a transaction
processor which verifies the purchaser’s financial data, and authorizes the
transaction in real-time, enabling the retailer to send the ordered product or
service to the purchaser (id. at col. 2, ll. 1-20).

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II. REJECTIONS
Claims 1-3, 5-9, 21-23, and 28-30 stand rejected by the Examiner as
follows:
1. Claims 1-3, 5, 6, 9, 21-23, and 28-301 as obvious under 35 U.S.C.
§ 103(a) over Bush ‘8632 and Paschke3 (Answer 3).
2. Claims 7, 8, and 28-30 as obvious under 35 U.S.C. § 103(a) over
Bush ‘863, Paschke, and Bushnell4 (Answer 5).
3. Claims 1, 5 and 21-23 as obvious under 35 U.S.C. § 103(a) over
Bush ‘863 and Young5 (Answer 8).

III. CLAIMS
Claims 1 and 7 are representative and are reproduced below along
with intervening claims 2 and 6:
1. A transactional processing system for purchasing products and
services from a plurality of available products and services and processing
corresponding financial transactions in real-time comprising:
(a) a programming transmitter means for broadcasting and updating a
plurality of transaction information sets associated with said plurality of

1 Claims 28-30 were not included in the statement of this rejection in the
Final Rejection (pages 2-3) dated February 23, 2012. However, in
responding to the Final Rejection on March 30, 2012, Patent Owner included
them in the statement of the rejection (page 4). This was an error since
claims 28-30 were not rejected over this combination of publications in the
Final Rejection. The Examiner’s inclusion of them in the statement of this
rejection in the Answer therefore appears to be an inadvertent error. We
therefore do not address claims 28-30 them in this rejection.
2 Bush, US 4,789,863 (“Bush ‘863”), issued Dec. 6, 1988.
3 Paschke, Robert A., EP 0344672 A1, filed Dec. 6, 1989.
4 Bushnell et al. (“Bushnell”), US 4,071,697, issued Jan. 31, 1978.
5 Young et al. (“Young”), US 5,479,268, issued Dec. 26, 1995.
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available products and services via a first communication channel, said first
communication channel having a plurality of subchannels, said subchannels
each transmitting channel having a plurality of subchannels, said
subchannels each transmitting a corresponding transaction
information set in said first communication channel;
(b) a plurality of receiver means each serving one user for receiving in
each receiver means the identical transaction information sets broadcast
from said programming transmitter, each one of said receiver means
including RAM storage means, and means for downloading and[ ]storing
within the RAM storage means a desired transaction information set from
the broadcast information sets received within each of said receiver means
and to select a desired transaction for purchasing a product and service
associated with said selected transaction information set, each of
said receiver means including means for transmitting financial information
of the user; each of said receiver means including a processor, programmed
instructions and stored information for acting on downloaded information,
and means for generating signals to said processor for modifying the
downloaded information based on the programmed instructions, stored
information and the downloaded information;
(c) means forming a second communication channel originating at
said plurality of receiver means and through which the financial information
of respective users which is processed at said receiver means is transmitted;
and
(d) transaction processor means coupled to said second
communication channel for receiving the financial information of respective
users generated at respective receiver means, said transaction processor
including means for generating an authorization signal through said second
communication channel to respective receiver means to authorize said
desired transaction in real time for said selected products and services.

2. A system according to claim 1, wherein each one of said
transaction information sets further comprise a plurality of prompting data
corresponding to said products and services for prompting users to make a
selection.

6. A system according to claim 2, wherein said transaction processor
before authorizing said desired transaction, verifies said financial
information of said user and transmits an authorizing signal to a financial
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institution, said financial institution making payments to vendors or service
providers.

7. A system according to claim 6, wherein said transaction processor
further transmits transaction information to said vendors or service
providers, allowing said vendors or service providers supply selected
products or services.

IV. OBVIOUSNESS IN VIEW OF BUSH ‘863 AND PASCHKE
Based on the Requester’s proposed rejection in the initial Request for
Reexamination, the Examiner found that the claims are obviousness in view
of Bush ‘863 and Paschke (Answer 3). Patent Owner contends that the cited
prior art combination does not describe the limitation of claim 1 of “each of
said receiver means including a processor, programmed instructions and
stored information for acting on downloaded information, and means for
generating signals to said processor for modifying the downloaded
information based on the programmed instructions, stored information and
the downloaded information.”

Support for disputed claim limitation
Patent Owner identified support in the ‘585 patent for the disputed
limitation. This support was said by Patent Owner to have also been cited
during the prosecution of the underlying application which led to the ‘585
patent (Appeal Br. 7). The support in the ‘585 patent for the limitations, as
indicated by Patent Owner, is as follows:
1) the “downloaded information” corresponding to “[e]ncoded
indexing data,” where the indexing data is described in the ‘585 patent as
“presented to microprocessor 201, in demodulated packets of data, that
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would be used as cues for the various types of menuing data, under program
control, so that appropriate menus and text would be placed in the correct
memory in the desired sequence and location.” (‘585 patent, col. 6, ll. 4-9;
Appeal Br. 7.)
2) “programmed instructions” corresponding to the main program
instructions for operating the receiver 26 (‘585 patent, col. 6, ll. 10-12;
Appeal Br. 7).
3) “stored information” corresponding to “Menu text RAM 205,
[which] is a paged RAM for storing individual pages of display text memory
[and] which can then be accessed, a page at a time and dumped out into the
video character generator 206 which would probably have a single page of
RAM” (‘585 patent, col. 6, ll. 19-24; Appeal Br. 7).

Discussion
In setting forth the basis of the proposed rejection, Requester relied
upon Patent Owner’s representations that the disclosure in the ‘585 patent of
“indexing data” corresponded to the claimed “downloaded information.”
Based on this representation, Requester cited Paschke’s description of
“Memory index pointers” at column 7, 38-39, as meeting the disputed claim
limitation (Request for Reexamination 7 and 37-38).
Patent Owner contends that it is not relevant that Paschke teaches a
feature disclosed in the ‘585 patent because the feature is not claimed
(Appeal Br. 8-9). We disagree. Claims are interpreted based on the written
description of a patent. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). Because Patent Owner represented that “downloaded
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information” is indexing data, it was reasonable for Requester to read the
claim as covering “indexing data” and to find the limitation taught in the
prior art when Paschke describes “Memory index pointers.” Patent Owner
did not provide sufficient evidence in the Appeal Brief, or during the
reexamination proceeding, that Paschke’s description of memory index
pointers does not meet the claimed limitation “downloaded information.”
Patent Owner also contends that Requester did not provide “a single
citation from Paschke to support” the allegation that Paschke disclosed
“programmed instructions.” (Appeal Br. 9.)
In the Request for Reexamination, Requester wrote:
In particular, Paschke discloses that each receiver means (e.g.,
location unit) includes a processor (Ex. C, Paschke at FIG. 3,
item 82), programmed instructions and stored information (id.
at FIG. 3, item 86, FIGS. 10A and 10B), and means for
generating signals to the processor for modifying the
downloaded information (id. at FIG. 10A, items 158, 160, and
164). See also id at 4:32-42.
(Request for Reexamination 37; underlining added for emphasis.) Thus,
contrary to Patent Owner’s arguments, Requester did point to disclosure in
Paschke for a teaching of programmed instructions.
In any event, it is the Examiner’s rejection that is before us for review.
The Examiner also cited support in Paschke for “programmed instructions.”
The Examiner, in adopting the rejection, stated that Paschke teaches that the
“breakdown and the display of the information are based on the program
stored in the memory and the information transmitted from the central site.
(see Pa[s]chke, col. 7, lines 30-45).” (Final Rejection dated February 23,
2012, p. 5.) Column 7, lines 30-43 of Paschke is reproduced below
(underlining added for emphasis):
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FIGS. 10A and 10B illustrate in flow chart form a computer
program for storing information in memory 90 and accessing it
such that the information can be displayed in the manner
described above. As previously discussed information can be
transmitted from the central site 24 to the memory 90 by a
variety of methods which is represented in FIG. 10A at 158.
Memory index pointers are generated for each category of
information at 160. In the case where a category of information
contains too many items to be displayed on display 70, it is
broken down at 164 into subsets and associated memory
pointers are generated.
The cited passage expressly refers to a “a computer program for storing
information in memory 90 and accessing it such that the information can be
displayed,” which would be reasonably understood to mean “programmed
instructions” because a “computer program” is defined as “a sequence of
instructions, stored in any medium, that can be interpreted and executed by a
computer.”6
Requester further argues that Paschke does not describe a computer
program “stored in memory” (Appeal Br. 10). However, column 4, lines 32-
42 of the Paschke patent, cited by Requester (Requester for Reexamination 7
and 25) and reproduced below (underlining added for emphasis), teaches a
program (“operating system software and other control programs”) stored in
memory:
In FIG. 3 as shown in block diagram form are the various
functional elements of the preferred embodiment of a location
unit 18. Controlling the unit is a microprocessor or
microcomputer 82 . . . . A read only memory 86 containing
operating system software and other control programs is
connected to the processor 82 by a line 88, and a non-volatile

6 http://www.thefreedictionary.com/computer+program (accessed November
18, 2013).
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random access memory 90 for storing display data and control
programs is connected to the processor by a line 92.
Patent Owner also contends “Requester alleged that item 86 shown in
FIG. 3 of Paschke teaches the feature of ‘stored information’ in the ‘585
patent. However, item 86 of Paschke is a ROM [read only memory].”
(Appeal Br. 9). Patent Owner argues that although Bush ‘863 discloses
RAM [random access memory], Bush ‘863 “does not teach or suggest
modifying the downloaded information based on the stored information.
Thus, any possible combination of Bush ‘863 and Paschke does not teach or
suggest modifying the downloaded information based on the stored
information.” (Appeal Br. 11.)
This argument is not persuasive. The claim does not specify whether
the “stored information” is stored on RAM or ROM. Nonetheless, the
Examiner found that Paschke7 “teaches downloading information and
storing them in memory by a variety of methods, (see Pa[s]chke col. 7, lines
35-40) and Bush ‘863 teaches storing information in RAM. (see Bush ‘863
fig. 3, item 100).” (Answer 4-5). Thus, it would have been obvious to one
of ordinary skill in the art to have used RAM in Paschke’s method because
RAM was a conventional storage media known in the art.
Patent Owner also contends that one of ordinary skill in the art would
not have had reason to combine Bush ‘863 and Paschke (Appeal Br. 11).
However, Requester gave a specific reason on pages 38-39 of the Request

7 Paschke teaches: “a non-volatile random access memory 90 for storing
display data and control programs is connected to the processor by a line
92.” (Paschke, col. 4, ll. 39-43.)

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for Reexamination for combining the references. Patent Owner did not
identify a defect in this reasoning and we find none.
For the foregoing reasons, we affirm the rejection of claim 1 as
obvious over Bush ‘863 and Paschke. Claims 3, 5, 6, 9, and 21-23 were not
separately argued and this fall with claim 1. See 37 § C.F.R. 41.37(c)(vii).
We affirm the rejection of these claims for the reasons given by the
Examiner and Requester. (See, e.g., Request for Reexamination 45-56 and
74-83.)

V. OBVIOUSNESS IN VIEW OF BUSH ‘863, PASCHKE, AND
BUSHNELL
Claim 7 is drawn to a system according to claim 6, “wherein said
transaction processor further transmits transaction information to said
vendors or service providers, allowing said vendors or service providers [to]
supply selected products or services.”
It was acknowledged by Requester that Bush ‘863 does not “disclose
allowing vendors to directly supply selected products/services, home
shopping systems for remotely purchasing merchandise that will later be
supplied by the vendor,” but states that such methods “were well known in
the art at the time of the alleged invention” as taught by Bushnell who
“discloses an interactive purchasing system that allows users to remotely
purchase merchandise from various stores.” (Request for Reexamination
140-141.) Requester contends it would have been obvious “to implement
the Bush ‘863 pay-per-view entertainment system, such that purchased
products could be supplied by the vendor as taught by Bushnell. Such a
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modification would have been an obvious variation, requiring no
technological insight.” (Id. at 141.) The Examiner did not supplement this
reasoning (Final Rejection 6; Answer 6).
Patent Owner argues that in Bush ‘863 “source 10 obtains prerecorded
entertainment from record companies and is also responsible for the
advertising of the system, customer service and customer billing (col. 2,
lines 30-47).” (Appeal Br. 12.)
As shown in FIG. 1 of Bush ‘863, the national credit network
16 transmits transaction (billing) information to the source 10,
and NOT to the record companies (“vendors or service
providers”). As such, Bush ‘863 teaches that the fund (money)
is transferred to the source 10 from the clearing house 200 and
then is transferred to record companies (vendors) by the source
10.
(Appeal Br. 12.)
Patent Owner argues that Bush ‘863 relates to a “non-interactive
purchasing system” where transaction information is sent by the credit
network or bank to the source 10, not by the transactional processor to the
source 10 as the claims would require.
Bushnell, on the other hand, argues Patent Owner, relates to an
interactive purchasing system in which shopping is conducted in a bi-
directional manner in which the interactions are through a vendor and
purchasers (id. at 13). For this reason, Patent Owner contends the skilled
worker would not have had reason to combine Bush ‘863 with Bushnell’s
teaching.
We agree. As argued by Patent Owner, Bush ‘863 teaches that source
10, which serves as a vendor, supplies products to a customer. The receiver
14, which serves as a “transaction processor,” transmits the transaction
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information to a national credit network 16 or bank 17, which in turn,
transmits the information to source 10 (Bush ‘863, Fig. 1). Thus, Bush ‘863
does not teach that the “said transaction processor further transmits
transaction information to said vendors or service providers” as required in
the claim. Rather, the “transaction information” is transmitted by the
national credit network or bank to the source 10 vendor.
The Requester, and Examiner, proposed modifying Bush ‘863 by
transmitting the transaction information to the vendor, i.e., receiver 14, but
this would be contrary to Bush ‘863 which teaches a system that expressly
avoids direct interactions between vendors and purchasers by using a source
10, which delivers prerecorded entertainment to a purchaser and which
interacts with the national credit card network or bank. The Requester’s
reasoning that it would have been obvious “to implement the Bush ‘863 pay
per view entertainment system, such that purchased products could be
supplied by the vendor as taught by Bushnell” (Request for Reexamination
141) ignores the fact that Bush ‘863 is structured differently than Bushnell
and also provides no persuasive reason as to why one of ordinary skill would
have had reason to have modified the interaction between purchaser and
vendor in Bush ‘863 to have made it like Bushnell. We thus reverse the
rejection of claim 7.

Claim 8
Claim 8 depends on claim 7. Because we have reversed the rejection
of claim 7, we must also reverse the rejection of claim 8.

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Claims 28-30
Independent claim 28 is drawn to a method “for real-time
authorization of payment for goods and services from a plurality of retailers
available through a video menu.” The method comprises a step of “(f)
transmitting transaction information to said plurality of retailers by the
payment processor, allowing said retailers supply selected products or
services.” This step is similar to the step recited in claim 7, which we
concluded was not described by the combination of Bush ‘863 and Paschke.
We therefore reverse the rejection of independent claim 28, and dependent
claims 29 and 30.

VI. OBVIOUSNESS IN VIEW OF BUSH ‘863 AND YOUNG
The only issue in dispute in this rejection is whether the combination
of Bush ‘863 and Young teaches the limitation of claim 1 in which the
“receiver means [is] including a processor, programmed instructions and
stored information for acting on downloaded information, and means for
generating signals to said processor for modifying the downloaded
information based on the programmed instructions, stored information and
the downloaded information.” The Examiner found that this limitation was
described in Young. The Examiner stated:
The combination of Bush ‘863 and Young teaches this
limitation because [of] Young teaching modifying display of
channels listings based on the user preference. (see Young; col.
11 line 65-col. 12 lines 65) In Young, the television schedule
controller customizes the downloaded channel information with
the stored information. (see Young; col. 12, lines 63-col. 12,
lines 12) Using the processor of controller, (see Young; col.
12, lines 63-65) the preference information set by a user (see
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Young, col. 11, lines 45-70), and the stored information (see
Young, col. 12, lines 64-66), Young modifies the display menu
of channel listing. (see Young col. 12 , lines 8-15) The
preference information set by the user is both programmed
instruction and stored information because it is stored locally
and it is used to customize the menu display; (see Young, co.
12, lines 64-66) and the channel information is stored
information and downloaded information because it is
downloaded and stored in the memory. (see Young col. 12,
lines 64-66)
(Answer 9; underlining added for emphasis.)
Patent Owner contends that the Examiner erred because the claim
requires three different elements: programmed instructions, downloaded
information, and stored information. We agree that the Examiner did not
establish by a preponderance of the evidence that all three elements are
described or suggested by the combination of Bush ‘863 and Young. The
Examiner identifies two elements, preference information and channel
information, which are said to account for the three elements recited in the
claim.
Requester’s rejection as proposed in the Request for Reexamination is
no better. Requester writes:
Young discloses that users can combine preference information
(i.e., favorite MY channels) with locally stored information
(i.e., unabridged channels) for creating menus based on
previously loaded and stored information combined with the
transmitted information.
(Request for Reexamination 134.) Requester asserted that this disclosure in
Young satisfied the claim limitation because it was similar to Patent
Owner’s characterization of the disputed limitation during prosecution of the
application which led to the ‘585 patent (id. at 133-134).
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This argument is not persuasive. Requester did not identify disclosure
in Young that corresponds to “programmed instructions,” as required by
claim 1. In the Patent Owner’s remarks referred to by Requester, Patent
Owner specifically referred to “programmed instructions,” and thus did not
ignore this limitation as Requester did.
Thus, we agree with Patent Owner that the “Examiner fails to provide
any reasons why any disclosure of Young teaches each one of the
programmed instructions, stored information and the downloaded
information.” (App. Br. 20.) Because neither Requester nor Examiner
identified sufficient support for the disputed claim limitations in Young or
the combination of Bush‘863 and Young, we are compelled to reverse the
rejection of claim 1, and dependent claim 5. Independent claim 21 also
requires downloaded information, programmed instructions, and stored
information (‘585 patent, claim 21(b)). Consequently, we reverse the
rejection of independent claim 21, and dependent claims 22 and 23 for the
same reasons as for claim 1.

VII. SUMMARY
The rejection of claims 1-3, 5, 6, 9, and 21-23 as obvious in view of
Bush ‘863 and Paschke is affirmed.
The rejection of claims 7, 8, and 28-30 as obvious in view of Bush
‘863, Paschke, and Bushnell is reversed.
The rejection of claims 1, 5, and 21-23 as obvious in view of Bush
‘863 and Young is reversed.

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TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART

PATENT OWNER:

HERSHKOVITZ & ASSOCIATES, PLLC
2845 DUKE STREET
ALEXANDRIA, VA 22314

THIRD PARTY REQUESTER:

SHOOK, HARDY & BACON LLP
2555 GRAND BLVD.
KANSAS CITY, MO 64108-2613