Ex Parte 5966440 et al

Board of Patent Appeals and Interferences

Aug 14, 2009

90007407 (B.P.A.I. Aug. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DMT LICENSING, LLC,
Appellant and Patent Owner
____________

Appeal 2009-003459
Reexamination Control 90/007,407
Patent 5,966,440
Technology Center 3900
____________

Decided: August 14, 2009
____________

Before JOSEPH F. RUGGIERO, SCOTT A. BOALICK, and KEVIN F.
TURNER, Administrative Patent Judges.

TURNER, Administrative Patent Judge

DECISION ON APPEAL
DMT LICENSING, LLC1 appeals under 35 U.S.C. §§ 134(b) and 306
from a final rejection of claims 1, 4, 6-8, 10-16, 18-21, 23-36, 39, 40, 42, 45,
47-61, and 80-129. We have jurisdiction under 35 U.S.C. §§ 134(b) and
306.

1 DMT Licensing, LLC is the real party in interest and the current owner of
the patent under reexamination. It is noted that DMT Licensing, LLC is a
wholly-owned subsidiary of GE Intellectual Property Licensing, Inc., which
is a wholly-owned subsidiary of General Electric Co. (App. Br. 2).
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We heard oral arguments on June 17, 2009, a written transcript of
which is included in the record.
We AFFIRM-IN-PART.

STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
by Napster, Inc. on January 13, 2005, of United States Patent 5,966,440 ( the
'440 Patent) issued to Arthur R. Hair on October 12, 1999, based on United
States Application 08/471,964 filed June 6, 1995. The Patent was originally
assigned to Parsec Sight/Sound, Inc., and subsequently assigned to DMT
Licensing, LLC.
The instant appeal is related to appeals of two other copending
reexaminations: 90/007,402 and 90/007,403. The former reexamination is
made with respect to United States Patent 5,191,573 (the '573 Patent, Appeal
No. 2009-3609) and the latter with respect to United States Patent 5,675,734
(the '734 Patent, Appeal No. 2009-3457). The relations between the issued
patents and their applications are illustrated in the chart below:
Appl. No. Filing Date Patent No. Relationship
07/206,497 Jun. 13, 1988 abandoned -
07/586,391 Sep. 18, 1990 5,191,573 Continuation of '497
08/023,398 Feb. 26, 1993 abandoned Continuation of '391
08/471,964 Jun. 6, 1995 5,966,440 Continuation of '398
08/607,648 Feb. 27, 1996 5,675,734 Continuation of '398
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Patentee’s invention relates to a system and an associated method for
electronic sales and distribution of digital audio or video signals (Spec. Col.
1, ll. 16-18). A first party, having authorization to distribute digital audio or
video, transfers electronically digital copies of the same to a second party for
storage in a local memory after a fee has been charged (id. at col. 6, ll. 16-
48).
Claim 1, which we deem to be representative, reads as follows:
1. A method for transferring desired digital video
or digital audio signals comprising the steps of:
forming a connection through telecommunications
lines between a first memory of a first party and a
second memory of a second party control unit of a
second party, said first memory having said desired
digital video or digital audio signals;
selling electronically by the first party to the
second party through telecommunications lines, the
desired digital video or digital audio signals in the first
memory, the second party is at a second party location
and the step of selling electronically includes the step of
charging a fee via telecommunications lines by the first
party to the second party at a first party location remote
from the second party location, the second party has an
account and the step of charging a fee includes the step
of charging the account of the second party; and
transferring the desired digital video or digital
audio signals from the first memory of the first party to
the second memory of the second party control unit of
the second party through telecommunications lines while
the second party control unit with the second memory is
in possession and control of the second party; storing the
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desired digital video or digital audio signals in a non-
volatile storage portion of the second memory; and
playing through speakers of the second party control unit
the digital video or digital audio signals stored in the
second memory, said speakers of the second party
control unit connected with the second memory of the
second party control unit;
wherein the non-volatile storage portion is not a
tape or CD.

The prior art references relied upon by the Examiner in rejecting the
claims are:
Bush 4,789,863 Dec. 6, 1988
Yurt 5,132,992 Jul. 21, 1992
Goldwasser 5,241,428 Aug. 31, 1993

Audio Technologies – History of Recordings, http://www.riaa.com/issues/
audio/history.asp (last visited Sep. 19, 2006).
History of the Compact Disc. – OneOff Media, Inc, http://www.oneoffcd.
com/info/historycd.cfm (last visited Sep. 19, 2006).
History of MPEG, http://www2.sims.berkley.edu/courses/is224/s99/
GroupG/report1.html (last visited Sep. 19, 2006).
Ed Grochowski, IBM HDD Evolution chart, http://www.storagereview.
com/guideImages/z_ibm_storageevolution.gif (last visited Sep. 19,
2006).

The Examiner rejected claims 1, 4, 6-8, 10-16, 18-21, 23-36, 39, 40,
42, 45, 47-61, and 80-129 under the following bases (Ans. 4-54):
Claims 1, 4, 6-8, 11-16, 19-21, 23, 24, 29-36, 39, 40, 42, 45, 47-61,
and 80-129 are rejected under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement;
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Claims 1, 4, 6-8, 11-16, 19-21, 23, 24, 29-36, 40, 42, 45, 47-61, and
80-129 are rejected under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement;
Claims 10, 18, and 25-28 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite;
Claims 1, 11-13, 23, 24, 29-31, 36, 42, 47-49, 58, 80, 87-89, 98, 99,
104-106, 111, 114, 116, 117, and 126 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Yurt;
Claims 4, 6-8, and 81-84 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yurt and Bush;
Claims 14-16, 19-21, 32-35, 39, 40, 45, 50-57, 59, 60, 61, 85, 86, 90-
97, 100-103, 107-110, 112, 113, 115, 118-125, and 127-129 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Yurt, Bush and
Goldwasser;
Claims 1, 4, 6-8, 10-16, 18-21, 23-36, 39, 40, 42, 45, 47-61, and 80-
129 are rejected under the judicially created doctrine of obviousness-type
double patenting as being unpatentable over claims 1-34 of the '734 Patent;
and
Claims 1, 4, 6-8, 10-16, 18-21, 23-36, 39, 40, 42, 45, 47-61, and 80-
129 are rejected under the judicially created doctrine of obviousness-type
double patenting as being unpatentable over claims 1-6 of the '573 Patent;

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ISSUES
Appellant contends that the Examiner is acting outside the scope of
the Examiner’s authority in the review and resulting reassignment of a
priority date for the instant claims (App. Br. 24). Appellant also argues that
the Examiner has applied improper and overly strict standards for both
written description and enablement (App. Br. 24-25). Appellant argues that
any inquiry into the written description and enablement support for the
claims should be limited to newly claimed subject matter (App. Br. 25).
With respect to the obviousness-type double patenting rejections, Appellant
asserts that these do not present new issues related to patentability and are
not proper as being made over patents subject to copending reexaminations
(App. Br. 25-26). In addition, Appellant argues that prior art rejections are
improper because the Examiner has applied references which are not prior
art (App. Br. 73-75).
The Examiner finds that the application of intervening publications is
justified because the claims are not entitled to the benefit of a filing date of
an earlier-filed application (Ans. 6-25, 84-86). The Examiner also defends
the application of the written description and enablement standards applied
(Ans. 6-25, 61-83). The Examiner also made specific findings of support for
specific claim elements in the examiner’s “Table I. New Matter Chart” (Ans.
10).
Only those arguments actually made by Appellant have been
considered in this decision. Arguments which Appellant could have made
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but chose not to make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Thus, the issues arising from the respective positions of Appellant and
the Examiner are:
1) Has Appellant shown reversible error in the Examiner’s
determination that the instant claims are not entitled to the benefit of priority
of a filing date of an earlier-filed application?
2) Has Appellant shown reversible error in the Examiner’s
determination that the instant claims are not supported under 35 U.S.C. §
112, first paragraph, in accordance with the written description and
enablement requirements?
3) Has Appellant shown reversible error in the Examiner’s
determination that claims 10, 18, and 25-28 are indefinite under 35 U.S.C. §
112, second paragraph?
4) Has Appellant shown reversible error in the Examiner’s rejection
of the instant claims over Yurt alone and in combinations with Bush and
Goldwasser?
5) Has Appellant shown reversible error in the Examiner’s rejection
of claims under the judicially created doctrine of obviousness-type double
patenting over claims of the '734 and '573 Patents?

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FINDINGS OF FACT
1. The instant Specification describes a system and an associated
method for electronic sales and distribution of digital audio or
video signals (Spec. Col. 1, ll. 16-18).
2. A first party, having authorization to distribute digital audio or
video, transfers electronically digital copies of the same to a
second party for storage in a local memory after a fee has been
charged (id. at col. 6, ll. 16-48).
3. The fee is charged via telecommunications lines by the first party
using the account of the second party and/or a credit card of the
second party (id. at col. 7, ll. 34-56).
4. Desired video signals are sent from a memory by a controller to a
receiver at the second party, where the video received is displayed
on a video display in possession and control of the second party
(id. at col. 8, ll. 6-18).
5. The first party control unit may include a hard disk and a sales
random access memory chip, where a first party control integrated
circuit controls and executes commands by the first party. Similar
hardware may be provided at the second party (id. at col. 7, ll. 15-
33).
6. The following is a reproduction of the Examiner’s “Table I. New
Matter Chart” (Ans. 10):
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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
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).
KSR disapproved a rigid approach to obviousness (i.e., an analysis
limited to lack of teaching, suggestion, or motivation). KSR, 550 U.S. 398 at
419 (“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents.”).

ANALYSIS
Rejections under 35 U.S.C. § 112, first paragraph
We begin by noting that the process of determining whether a claim
for the benefit of an earlier filing date under 35 U.S.C. § 120 is proper and
supported, is separate from determining whether claims have enablement
and written description support of the application in which they are
presented. While the former requires an analysis under 35 U.S.C. § 112,
first paragraph, to determine whether there is adequate written description in
the cited application to support claims in the subject application, the latter is
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generally divorced from considerations of an earlier filing date. In other
words, claims should be analyzed to determine whether they lack support of
written description or enablement with respect to the originally filed
application in which they are presented. Determining whether such claims
can claim the benefit of an earlier filing date is a separate inquiry. See,
M.P.E.P. § 201.11.
The Examiner’s analysis suggests adequate written description and
enablement should rest with all members of the “family” for an individual
claim to be supported under 35 U.S.C. § 112, first paragraph. The Examiner
argues that the original claims of instant patent are not entitled to the benefit
of the filing date of its parent because the written description of the parent,
grandparent and great-grandparent do not support features in the instant
claims (Ans. 8). Thus, even if subject matter of the instant claims is
supported by the disclosure of the application filed in 1990, i.e., 07/586,391,
support for the instant claims would need to be found in the earlier filed
application to have adequate support under 35 U.S.C. § 112, first paragraph.
We do not agree.
At Oral Hearing, the Examiner responded thusly:
JUDGE BOALICK: . . . as I read the Examiner’s answer, it
appears that you’re saying that there is no written description or
enablement in the great-grandparent application, as opposed to
the particular application in which these claims arise. Is that –
am I reading you answer correctly?
EXAMINER FOSTER: Yes.
(Oral Hearing Transcript, p. 12)
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In addition, the Examiner cites M.P.E.P. §§ 2258 and 2163.1 (Ans.
26), but those sections are directed to performing analysis for 35 U.S.C. §
112, first paragraph, under different circumstances. We find that any
determination of whether the instant claims have support under 35 U.S.C. §
112, first paragraph, should be made with respect to the instant
Specification, i.e. the '440 Patent. From our review of the instant
Specification and claims, we find no aspect of the instant claims which are
unsupported by the instant Specification, in terms of written description
and/or enablement (FF 1-5).
Specific to new and amended claims which contain a negative
limitation, i.e. “‘a non-volatile storage portion of the second memory . . .
wherein the non-volatile storage portion is not a tape or CD’”, the Examiner
argues that such a limitation has no basis in the original disclosure (Ans. 27).
The Examiner makes reference to a lack of support in the “Great-
Grandparent application” (Id.), which we find to be improper. Similarly, the
Examiner’s rejection for lack of enablement also discusses the “Great-
Grandparent application,” and talks about requiring undue experimentation
to enable the large size filed required for digital video (An. 29-33). Again,
we find that rejections under 35 U.S.C. § 112, first paragraph, should be
made with respect to the Specifications which are filed with the subject
claims. As such, we find that the Examiner’s rejections of claims 1, 4, 6-8,
11-16, 19-21, 23, 24, 29-36, 39, 40, 42, 45, 47-61, and 80-129 under 35
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U.S.C. § 112, first paragraph, as failing to comply with the written
description and enablement requirements were made in error.

Claims of Priority Under 35 U.S.C. § 120
Written description adequate to provide support priority under 35
U.S.C. § 120 to an earlier application need not be found to exist to the
earliest application within the chain. See, In re Edwards, 568 F. 2d 1349,
1351 (CCPA 1978) (where the Court found it unnecessary to determine
whether the grandparent application complies with the written description
requirement, where priority to the parent would determine the propriety of
the prior art rejection). Thus, if the disclosure of the 07/586,391 application,
filed Sep. 18, 1990, provides written description and/or enablement support
for all of the subject matter of a claim, it should be accorded priority of that
filing date, even if it is not supported by an earlier filing date through an
earlier application.
The Examiner’s “Table I. New Matter Chart,” (FF 6) looks at the
presence of certain features in the “great-grandparent” application and the
“grandparent” application. All of the features listed in the table are
supported by the disclosure of at least the Grandparent Application, which
was filed September 18, 1990. In addition, all of the aspects of the claims
discussed (Ans. 11-13) are supported by subject matter having priority to at
least that date. The Examiner also finds that the Grandparent and Parent
applications fail to support claims in the Child application, but the Answer
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fails to provide any specific limitations not supported, and merely states “for
the same reasons as discussed extensively above” (Ans. 22). The fact that “a
very large amount of the new text” was added to the specification is not
necessarily dispositive of whether new matter has been added (Ans. 23).
Therefore, given the support indicated (FF 6), it would appear that the
instant claims are all supported back to at least to that indicated date, i.e.
September 18, 1990.
The Examiner also argues that descriptions of video download
features are not supported by the earliest filed application (Ans. 16-20),
specifically that the originally disclosed audio transmission features fail to
imply or require any video transmission features. While the Examiner
emphasizes that circa 1988, devices capable of decoding and playing back
digital video, storage for the same, and distribution channels of adequate
bandwidth did not exist, we find more compelling Appellant’s arguments
that the Examiner is importing aspects into the claims (Reply Br. 12-16).
Appellant argues correctly that the claims do not specify quality, size or
bandwidth required for the video signals, and assuming the same to show
inadequacy of disclosure is improper (Id.).
Appellant also argues that the priority date for claims in the instant
patent is not a new issue related to patentability (App. Br. 41). Appellant
argues that the original Examiner assigned a priority date of June 13, 1988 to
the claims of the '734 Patent and that the Office lacks jurisdiction to review
again those issues determined by the original Examiner (App. Br. 41-49).
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The Examiner emphasizes that where the sufficiency of the patent
application has not been originally decided, the proper priority date to assign
to claims is within the purview of the reexamination process (Ans. 78-79).
Central to this issue is whether Patlex Corp. v. Quigg, 680 F. Supp. 33
(DC Cir. 1988), is controlling. In that case, the patent holder sought review
of a Board decision affirming the rejection of claims in a reexamination
proceeding. A first examiner found a “great-grandparent” application
provided an enabling disclosure to a “great-grandchild” application, which
issued as the patent. During the reexamination proceedings, a second
examiner reconsidered the merits of the first examiner’s decision in order to
make a rejection based on intervening prior art. However, the court found
that “the reexamination statute does not contemplate a ‘reexamination’ of
the sufficiency of a disclosure.” Id. at 37. The court further found that the
Examiner and the Board lacked jurisdiction to reexamine the sufficiency of
the specification of the “great-grandparent” application. Id.
The Examiner finds that Patlex differs from the instant case in several
ways (Ans. 78-79). The Examiner finds that in Patlex, the specifications of
the “great-grandparent” and “great-grandchild” applications are essentially
identical, and that the claims were drawn to the same invention (Ans. 79).
The Examiner finds this to be in contradistinction to the instant case where
substantial amount of new text was added to both the Specification and the
claims. However, as discussed supra, we do not find a substantial amount of
added matter to be dispositive of whether there was proper written
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description for that added matter. We continue to find that the recitations to
digital video are supported by adequate written description to show that the
Appellant had possession of the same at least by the time of filing of the '391
application on September 18, 1990. As such, we do not find the Examiner’s
distinctions between Patlex and the instant case to be compelling.
The Examiner also cites Ex parte Basell, Appeal No. 2007-0111
(BPAI 2007), aff’d on other grounds, In re Basell Poliolefine Italia S.P.A.,
547 F.3d 1371 (Fed. Cir. 2008), as allowing for a rejection based on
intervening art because the filing date of the continuation was not entitled to
the filing date of the parent (Oral Hearing Transcript p. 14, of related Appeal
No. 2009-3457). In the Board’s decision, the original Examiner never
considered the substantive issues of patentability of the claims over a
specific piece of prior art because the examiner mistakenly accorded the
claims an earlier filing date sufficient to antedate the prior art reference. Id.,
slip op. at 45-46. The Board’s decision distinguishes Patlex by saying that
in that case, the specifications were identical and that the original examiner
had determined that the original disclosure enabled the subject patent’s
claims. Id., slip op. at 54. It is on this latter basis that the panel in Basell
distinguishes and we do not.
As Appellant has argued and we have discussed above, the original
application faced a new matter rejection, which was overcome (Oral Hearing
Transcript p. 6). Thus, in similarity to Patlex, and distinguishable from
Basell, the original examiner in the application for the instant patent
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considered whether the added texts were new matter and subsequently
concluded they were not, such that the patent was allowed to issue. As such,
under 35 U.S.C. §§ 301-302, 37 CFR § 1.552(a), 37 CFR § 1.552(c), and
MPEP § 2258, the Examiner cannot be allowed to reexamine the sufficiency
of the specification.

Indefiniteness of claims 10, 18, and 25-28 under 35 U.S.C. §112,
second paragraph
We note that Appellant has not acknowledged this indefiniteness
rejection in Appellant’s lists of grounds of rejection to be reviewed on
appeal (App. Br. 21-23; Reply Br. 4-5). We assume that Appellant was not
shunning our review of this rejection, but instead we regard this as a mere
omission. As the Examiner has pointed out, claims 10 and 18 lack
antecedent basis because those claims depend from cancelled claims 9 and
17, respectively (Ans. 33). As such, we agree with the Examiner and affirm
the rejection of claims 10, 18, and 25-28 on this basis.

Prior Art Rejections Over Yurt, Bush, and Goldwasser
All prior art rejections of the claims rely in part on Yurt. As discussed
above, we find the instant claims to have at least the benefit of the
application filed September 18, 1990, the 07/586,391 application. As
Appellant argues (App. Br. 73-75), Yurt issued from an application filed
January 7, 1991, and cannot be considered prior art to the instant claims
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under 35 U.S.C. §§ 102 or 103. We find, therefore, that all of the prior art
rejections are improper and that the Examiner erred in rejecting the claims
over the same.

Obviousness-type Double Patenting
Appellant raises three arguments against the obviousness-type double
patenting rejections of the instant claims over claims listed in the '573 and
'734 Patents: 1) Appellant argues that the issue of double patenting was
previously considered by the original Examiner of the original application
for the instant patent and cannot now be considered a substantial new
question of patentability (App. Br. 76-78); 2) Appellant argues that under
our prior precedent, Ex parte Schmit, an obviousness-type doubling
patenting rejection is improper if made over a related patent alone, without
citation to prior art or general knowledge of one of ordinary skill in the art
(App. Br. 78-79); 3) Appellant argues that since the claims of the '573 and
'734 Patents are also subject to reexamination, such a double patenting
rejection is improper over claims of those patents as they existed prior to the
reexamination proceedings (App. Br. 80). With respect to the latter basis we
find the rejections to be improper.
At Oral Hearing, the instant Examiner appeared to believe that the
obviousness-type double patenting rejections were listed as provisional
rejections. “EXAMINER FOSTER: The – was it not listed as a provisional
rejection?” (Oral Hearing Transcript p. 13.) Given the apparent clear intent,
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we find that the Examiner intended to raise the obviousness-type double
patenting rejections provisionally, and that the actual rejections were not
made provisional (Ans. 52-54). As such, we find that the obviousness-type
double patenting rejections were made in error.

CONCLUSIONS
Appellant has shown that the Examiner reversibly erred in
determining that: 1) claims 1, 4, 6-8, 11-16, 19-21, 23, 24, 29-36, 39, 40,
42, 45, 47-61, and 80-129 fail to comply with the written description and
enablement requirements under 35 U.S.C. § 112, first paragraph; 2) claims
1, 11-13, 23, 24, 29-31, 36, 42, 47-49, 58, 80, 87-89, 98, 99, 104-106, 111,
114, 116, 117, and 126 were obvious under 35 U.S.C. § 103(a) as being
unpatentable over Yurt; 3) claims 4, 6-8, and 81-84 were obvious under 35
U.S.C. § 103(a) as being unpatentable over Yurt and Bush; 4) claims 14-16,
19-21, 32-35, 39, 40, 45, 50-57, 59, 60, 61, 85, 86, 90-97, 100-103, 107-110,
112, 113, 115, 118-125, and 127-129 were obvious under 35 U.S.C. § 103(a)
as being unpatentable over Yurt, Bush and Goldwasser; and 5) claims 1, 4,
6-8, 10-16, 18-21, 23-36, 39, 40, 42, 45, 47-61, and 80-129 should be
rejected under the judicially created doctrine of obviousness-type double
patenting as being unpatentable over claims 1-34 of the '734 Patent or claims
1-6 of the '573 Patent. Appellant has failed to show that the Examiner
reversibly erred in rejecting claims 10, 18, and 25-28 as being indefinite
under 35 U.S.C. §112, second paragraph.
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DECISION
The decision of the Examiner to reject claims 1, 4, 6-8, 11-16, 19-21,
23, 24, 29-36, 39, 40, 42, 45, 47-61, and 80-129 is REVERSED. The
decision of the Examiner to reject claims 10, 18, and 25-28 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

rvb

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