Ex Parte 6925469 et al

Patent Trial and Appeal Board

Jun 24, 2013

95000313 (P.T.A.B. Jun. 24, 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.
95/000,313 10/31/2007 6925469 108.0007-00000 7392
22882 7590 06/25/2013
MARTIN & FERRARO, LLP
1557 LAKE O'PINES STREET, NE
HARTVILLE, OH 44632
EXAMINER
FERRIS III, FRED O
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/25/2013 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
____________

GOOGLE, INC., APPLE, INC., and NAPSTER, INC.
Requesters, Respondents

v.

INTERTAINER, INC.
Patent Owner, Appellant
____________

Appeal 2012-009466
Reexamination Control Number 95/000,313
Patent 6,925,469 B2
Technology Center 3900
____________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and KEVIN F.
TURNER, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-009466
Reexamination Control Number 95/000,313
Patent 6,925,469 B2

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STATEMENT OF THE CASE
A. SUMMARY
The Patent Owner Intertainer (the “Patent Owner”) appeals under
35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision
1
to reject claims 1-
10, 12-21, 23-38, 47-63, and 67.
2
The Third-Party Requesters Facebook,
Inc., Apple, Inc., and Napster, Inc. (“Requesters”) urge that the Examiner’s
decision must be affirmed.
3
We have jurisdiction under 35 U.S.C. § 6(b)(2).

B. RELATED PROCEEDINGS
We are informed that there are no appeals or interferences pending
which will directly affect or have bearing on the Boards decision. (P.O.
Br. 1, Req. Br. 1). U.S. Patent 6,925,469 which is the subject of this appeal
is being litigated in the U.S. District Court for the Eastern District of Texas,
in Civil Action 2-06CV-549, which is currently stayed pending this
reexamination. (Id.).

C. THE INVENTION
The claimed invention is directed to an open business platform that
provides an end-to-end solution for managing and distributing media assets

1
See Right of Appeal Notice mailed November 12, 2010 (“RAN”),
which is incorporated by reference in the Examiner’s Answer mailed
April 16, 2012. In discussing the Examiner’s rejections and decisions
favorable to patentability, this opinion makes reference to the “RAN”.

2
See Patent Owner’s Appeal Brief filed May 2, 2011 (“P.O. Br.”).

3
See Requester’s Respondent Brief filed June 1, 2011 (“Req. Br.”).

Appeal 2012-009466
Reexamination Control Number 95/000,313
Patent 6,925,469 B2

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from content suppliers (‘469 Patent, col. 2:15-18). Claims 1 and 20 are
independent claims. Claim 1 is representative and is reproduced below:
1. A system for managing marketing digital media content
supplied by a plurality of media content suppliers to a plurality of
consumers, said system comprising:
a processor operable to combine video assets supplied by the
media content suppliers, metadata, and digital commerce
opportunities to create a media content offering for use by the
consumers, said processor having a private service interface adapted
to permit the media content suppliers to directly access said system to
administer the media content offering;
at least a first input field provided by said private service
interface, said first input field adapted to permit the media content
suppliers to enter at least a first business rule governing distribution of
the video assets;
at least a second input field provided by said private service
interface for entering at least a second business rule governing
association of the video assets with merchandise related to the video
assets available to consumers through the digital commerce
opportunities;
a database for storing the media content offering;
a file repository for storing the media content associated with
the media content offering, the media content including the video
assets;
a server adapted to distribute the video assets stored in said file
repository together with the metadata and the digital commerce
opportunities as the media content offering to the consumers;
a licensing server operable to grant a license to each consumer
requesting use of the video assets requiring the license upon a
determination that the consumer making the request is permitted to
use the video assets; and
an e-commerce platform adapted to permit the consumers to
purchase the merchandise available through the digital commerce
opportunities.
4

4
Claim 1 as presented in the P.O. Appeal Brief claim appendix, page 42,
reproduced without underlining and brackets from the amendments.
Appeal 2012-009466
Reexamination Control Number 95/000,313
Patent 6,925,469 B2

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D. THE PRIOR ART
1. The following prior art is involved in the Patent Owner’s
Appeal:

Herz et al. US 5,758,257 May 26, 1998
Katz et al. US 5,926,624 July 20, 1999
Fritsch US 6,247,130 B1 June 12, 2001
Wiser et al. US 6,385,596 B1 May 7, 2002
Strietzel US 2002/0120564 A1 August 29, 2002
Medina et al. US 6,959,288 B1 October 25, 2002
Landress et al. US 2003/0191816 A1 October 9, 2003
Peindao et al. US 6,775,655 B1 August 10, 2004
Novak US 7,103,905 B2 September 5, 2006

Intertainer Inc., Feb. 11, 1998 Press Release, “Intertainer Unveils World’s
First Interactive Broadband Service for On-Demand Delivery of Full Motion
Video-Based Entertainment,” available at
http://www.intertainer.com/news/30.html

Gralla, Preston. “How the Internet Works”, Que Publishing, 1999.

Robert, Michael and Simpson, Ron. The Official MP3.com Guide to MP3,
1999.

Underhill, Rod & Gertler, Nat, The Complete Idiot’s Guide to MP3: Music
on the Internet, Chapter 9 (2000).

Robert, Michael and Simpson, Ron. The Official MP3.com Guide to MP3,
1999.

Appeal 2012-009466
Reexamination Control Number 95/000,313
Patent 6,925,469 B2

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E. THE ADOPTED REJECTIONS
The Examiner rejected the claims as follows:
5

REJECTIONS UNDER 35U.S.C. § 112, FIRST PARAGRAPH
1. Claims 1-10, 12-19 and 47-57 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.

2. Claims 20-21, 23-38, 58-63 and 67 are rejected under 35 U.S.C.
§ 112, first paragraph.

3. Claims 20-21, 23-38, 58-63, and 67 are rejected under 35 U.S.C.
§ 112, first paragraph.

4. Claims 1-10, 12-19, and 47-57 are rejected under 35 U.S.C. § 112,
first paragraph.

5. Claim 10 is rejected under 35 U.S.C. § 112, first paragraph.

6. Claims 20-21, 23-38, 58-63, and 67
6
are rejected under 35 U.S.C.
§ 112, first paragraph.

5
The Examiner listed the adopted rejections in the Action Closing
Prosecution, mailed May 21, 2010, pages 23-67, which referenced
Requesters’ Response of February 12, 2010, hereinafter also referred to as
“RR.”
6
The RAN indicates that claims 1-10, 12-19, and 47-57 are rejected under
this rejection but this is considered a typographical error since the Examiner
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Patent 6,925,469 B2

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REJECTIONS UNDER 35 U.S.C. § 112, SECOND PARAGRAPH
7. Claims 1-10, 12-21, 22-38 and 47-63 are rejected under 35 U.S.C.
§ 112, second paragraph.

8. Claims 20-21, 23-38 and 58-63 are rejected under 35 U.S.C.
§ 112, second paragraph.

9. Claims 20-21, 23-38 and 58-63 are rejected under 35 U.S.C.
§ 112, second paragraph.

10. Claims 1-10, 12-19, and 47-57 are rejected under 35 U.S.C.
§112, second paragraph.

11. Claims 26 and 34 are rejected under 35 U.S.C. § 112, second
paragraph.

REJECTIONS UNDER 35 § U.S.C. 102 and 35 § U.S.C. 103
12. Claims 1-9, 15-21, 27-38, 47-63, and 67 are rejected under 35
U.S.C. § 102(b) as being anticipated by the MP3.com Guide. (RAN, 30-56).

13. Claims 48-63 and 67 are rejected under 35 U.S.C. §§ 102/103
in further view of Strietzel. (RAN, 56).

has adopted the Requesters’ proposed rejection from pages 11-12 of the RR
which instead addresses claims 20-21, 23-38, 58-63, and 67.
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14. Claims 10, 15, 16, 26, 29, and 30 are rejected under 35 U.S.C.
§ 103 (a) as obvious over the MP3.com Guide in view of Medina. (RAN,
56).

15. Claims 1-9, 15-21,27-38,47-63, and 67 are rejected under 35
U.S.C. § 103 (a) as obvious over the MP3.com Guide in view of Wiser.
(RAN, 57).

16. Claims 4, 10, 15, 16, 26, and 28-30 are rejected under 35
U.S.C. § 103(a) as obvious over the MP3.com Guide in view of Katz.
(RAN, 57).

17. Claims 18-19 are rejected under 35 U.S.C. § 103 (a) as obvious
over the MP3.com Guide in view of Idiot's Guide to MP3. (RAN, 57-58).

18. Claims 17, 36, and 38 are rejected under 35 U.S.C. § 103 (a) as
obvious over the MP3.com Guide in view of 1999 MP3.com Web Site.
(RAN, 58).

19. Claims 1-10, 12-21, 23-38, 47-63 and 67 are rejected under 35
U.S.C. § 102(e) as being anticipated by Medina. (RAN, 61).

20. Claims 2-7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Medina in view of the MP3.com Guide. (RAN, 61-62).

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21. Claim 8-9, 14 and 17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Medina in view of Wiser. (RAN, 62).

22. Claim 27-28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Medina in view of Herz. (RAN, 62).

23. Claims 1-10, 12-21, 23-38, 47-63, and 67 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Novak in view of the 1999 Press
Release. (RAN, 64).

24. Claims 1, 20, and 39
7
are rejected under 35 U.S.C. § 102(e) as
being anticipated by Landress. (RAN, 66-67).

25. Claims 2-19, 21-28, and 40-71
8
are rejected under 35 U.S.C.
§§ 102/103 as being unpatentable over Landress and/or Landress in view of
Fritch. (RAN, 67).

26. Claims 1-10, 12-21,23-38,47-63 and 67 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Landress in view of Peinado.
(RAN, 67).

7
Given that claim 39 has been cancelled (RAN, 1), the adoption of a
rejection of claim 39 was improvidently made.
8 Given that claims 11, 22, 39-46, 64-66, and 68-71 have been cancelled
(RAN, 1), the adoption of a rejection of those claims was improvidently
made.
Appeal 2012-009466
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Patent 6,925,469 B2

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E. FINDINGS OF FACT
We find that the findings of fact used in the Analysis section below
are supported at least by a preponderance of the evidence.
9

F. ANALYSIS

REJECTIONS UNDER 35 U.S.C. § 112, FIRST PARAGRAPH

Rejection 1
The Examiner rejected claims 1-10, 12-19, and 47-57 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement for the reasons set forth in the Requesters’ Response on page 3
(IIB) for failure to describe the claimed “second input field” (RAN, 23-24).
The Requesters agreed with this position in the Requesters’ Brief at 4-5.
In contrast, the Patent Owner argues that support for the “second input
field” is shown in Fig. 1 at the DESP console 144, col. 4:56-57, col. 8:15-22,
col. 8:36-38, and col. 8:58-62 (P.O. Br., 10-11).
We agree with the Examiner. The factual inquiry for determining
whether a specification provides sufficient written description for the
claimed invention is whether the specification conveys with reasonable
clarity to those skilled in the art that, as of the filing date sought, applicant
was in possession of the invention as now claimed. Vas-Cath, Inc. v.

9
See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). An applicant shows
possession of the claimed invention by describing the claimed invention
with all of its limitations using such descriptive means as words, structures,
figures, diagrams, and formulas that fully set forth the claimed invention.
Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
Here, the cited Fig. 1, col. 8:15-22, and col. 8:58-62, provide no specific
support for such a claimed “second input field”. While the citation made to
col. 4:46-57 does disclose the use of business rules, for example, it does not
specifically disclose the claimed “second input field,” and for this reason,
this rejection of record is sustained.

Rejections 2, 3
The Examiner rejected claims 20-21, 23-38, 58-63 and 67 under 35
U.S.C. § 112, first paragraph as set forth in RR on page 8, section IV (B) for
failure to provide support for “the digital commerce opportunities including
merchandise from a merchandise database” (RAN, 25). The Requesters
take the same position in the Requester’ Brief as well (Req. Br., 3-4).
In contrast, the Patent Owner argues that support for the cited claim
limitation is found in the subject ‘469 Patent at col. 3:19-25 and col. 4:61-63
(P.O. Br., 16-20).
We agree with the Patent Owner that the cited portions of the
‘469 Patent provide support for the cited phrase. At col. 3:19-25, it is
disclosed that merchandise databases can be combined with movie assets to
create a new item providing support for the cited claim limitation. For this
reason, this rejection of record is not sustained.
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Rejection 3 of record is drawn to a similar issue for the limitation for
“associating the digital commerce opportunities with merchandise related to
the video content” and this rejection is not sustained as well for the reasons
addressed above as well.

Rejection 4
The Examiner rejected claims 1-10, 12-19, and 47-57 under 35 U.S.C.
§ 112, first paragraph as set forth in Requesters’ Response on page 5,
section II (D) which was adopted (RAN, 25) for failure to provide support
for the recitation of “to grant a license to each consumer requesting use of
the video assets requiring the license”. The Requesters agree with this
position as well (Req. Br. 6-7).
In contrast, the Patent Owner argues that the Examiners claim
construction is too broad and does not require a license for “all’ of the video
assets but only those video assets requiring a license (P.O. Br. 13-14).
We agree with the Examiner. Here, the claim limitation is directed to
“the video assets” and the earlier references to video assets in the claim refer
to all the video assets, as asserted by Examiner, making this claim
construction a very reasonable and proper one under a broadest reasonable
interpretation. The Patent Owner has failed to cite to any portion of the
Patent that discloses this newly claimed subject matter. For these reason
this rejection is sustained.

Rejection 5
The Examiner rejected claim 10 under 35 U.S.C. § 112, first
paragraph as set forth in Requesters’ response on page 6, section II (E)
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which was adopted (RAN, 25) for failing to provide support for both a
“licensing server” and “media content server” to be used at the same time.
The Requesters agreed with this position (Req. Br. 7).
In contrast, the Patent Owner has argued that this rejection is improper
(P. O. Br. 15-16).
We agree with the Patent Owner. The Requesters cite to col. 13:24-28
which states “[a]lternatively, media assets may be offered to the consumer as
part of a subscription package” (RR, 6) but this citation does not address
other portions of the Specification. Here the subject ‘469 Patent provides
support for both a subscriber management system and a licensing server
(col. 3:30-37). A subscription package is also cited at col. 13:24-30. Here,
the cited servers perform different functions and are supported by the
disclosure of the Specification. For these reasons, this rejection is not
sustained.

Rejection 6
The Examiner rejected claims 20-21, 23-38, 58-63, and 67 under 35
U.S.C.§§ 112, first paragraph as set forth in Requesters’ response at page 11,
section III (F) (RAN, 26) for failure to disclose the claimed “determining”
step.
In contrast, the Patent Owner has argued that this rejection is improper
(P. O. Br., 14-15).
We agree with the Examiner for similar reasons to those addressed in
the Analysis of Rejection 4 above. Here, the recitation in the cited
determination step refers to “the video content” which corresponds to all the
video content in the context of the claim. As noted above, the Specification
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fails to provide support for this. For these reasons this rejection is
sustained.

REJECTIONS UNDER 35 U.S.C. § 112, SECOND PARAGRAPH

Rejection 7
The Examiner rejected claims 1-10, 12-19 and 47-57 under 35 U.S.C.
§ 112, second paragraph, as being indefinite as set forth in the Requesters
response at pages 2-3 (RAN, 26-28) because the term “digital commerce
opportunities” is indefinite. The Requesters agrees with this position again
in the Requesters’ Brief at pages 3-4.
In contrast, the Patent Owner argues that support for this claim
limitation is provided at 3:19-25 and that the rejection is improper (P.O.
Br., 16-18).
We agree with the Patent Owner. The test for definiteness under 35
U.S.C. § 112, second paragraph, is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986) (citations omitted). Here, the cited term “digital
commerce opportunities” is referenced in the subject patent at col. 3:19-25
in an example. Here, breadth is not indefiniteness and those skilled in the art
would understand what is claimed in reference to the term when the claim is
read in light of the specification. For these reasons this rejection is not
sustained. The rejection of claims 20-21, 23-38 and 58-63 under 35 U.S.C.
§ 112, second paragraph is drawn to a similar issue and this rejection is not
sustained for the same or similar reasons.
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Patent 6,925,469 B2

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Rejection 8
The Examiner rejected claims 20-21, 23-38 and 58-63 under 35
U.S.C. § 112, second paragraph as set forth in Requesters’ response on
page 8, section IV (C) (RAN, 10) because the phrase “associating the digital
commerce opportunities with merchandise related to the video content” is
indefinite. The Requesters take this position again in the Requesters’ Brief
at pages 9-10.
In contrast, the Patent Owner argues that the rejection is improper
(P.O. Br., 21-22).
We agree with the Patent Owner. Here, the cited claim limitation for
“associating the digital commerce opportunities with merchandise related to
the video content” is not indefinite as asserted in the rejection as it is clear
what is being claimed. The Patent at col. 3:21-26 and col. 4:59-63 provides
a description of creating digital commerce opportunities with movies and
that electronic commerce fulfillment may include merchandise and those
skilled in the art would understand what is claimed in reference to the term
when the claim is read in light of the specification. For this reason, this
rejection of record is not sustained.

Rejection 9
The Examiner rejected claims 20-21, 23-38 and 58-63 under 35
U.S.C. § 112, second paragraph as set forth in Requesters’ response on
page 10 (RAN, 25) for the phrase “permitting the consumers to purchase the
merchandise” being indefinite. The Requesters agreed with this position in
the Requesters’ Brief at 10-11.
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In contrast, the Patent Owner argues that this rejection is improper
(P.O. Br. 23).
We agree with the Patent Owner. The Patent at col. 3:21-26 and
col. 4:59-63 provides a description of creating digital commerce
opportunities with movies and that electronic commerce fulfillment may
include merchandise and those skilled in the art would understand what is
claimed in reference to the cited limitation when the claim is read in light of
the specification as it would be clear that the merchandise was provided for
purchase in the fulfillment system. For this reason this rejection is not
sustained.

Rejection 10
The Examiner rejected claims 1-10, 12-19, and 47-57 under 35 U.S.C.
§ 112, second paragraph as set forth in Requesters’ response at page 4,
section II (C) (RAN, 29) for the phrase “the media content associated with
the media content offering, the media content including video assets” being
indefinite. The Requesters agree with this position again in the Requesters’
Brief at pages 5-6.
In contrast, the Patent Owner argues that this rejection is improper
(P.O. Br., 17-18).
We agree with the Patent Owner. Here the cited phrase “the media
content associated with the media content offering, the media content
including video assets” is not indefinite even after the other amendments to
the claim. It is clear that the cited claim limitation refers to the media
content associated with the media content offering which may include video
assets and this cited claim limitation is not indefinite as those skilled in the
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art would understand what is claimed in reference to the term. For these
reasons, this rejection of record is not sustained.

Rejection 11
The Examiner rejected claims 26 and 34 under 35 U.S.C. § 112,
second paragraph as set forth in Requesters’ response section III (G)
(RAN, 25) due to the newly added “determining” step and the newly added
“issuing a license” limitation in independent claim 20. The Requesters agree
with this position again in the Requesters’ Brief at 11-12.
The Patent Owner argues that this rejection is improper (P.O. Br., 24-
25).
We agree with the Patent Owner. With regard to claim 26 the claim
recites “wherein the video content is offered only to the consumers of a
video content subscription service”. Here, this claim limitation is not
rendered indefinite by the combination with claim limitation for “issuing a
license to the consumer making the request” as those skilled in the art would
understand what is claimed in reference to the term. For these reasons, this
rejection of record for claim 26 is not sustained.
With regard to claim 34, the cited claim recites “wherein said
determining step is performed after a selected amount of requests is
collected”. This cited claim limitation is indefinite and unclear because both
claim 20 and claim 33 contain separate “determining steps” and is unclear
and indefinite which claimed “determining” step is being referred to. For
this reason, this rejection is affirmed.

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REJECTIONS UNDER 35 U.S.C. §§ 102 and 103

Rejections 12 and 15
The Examiner rejected claims 1-9, 15-21, 27-38, 47-63, and 67 under
35 U.S.C. § 102(b) as being anticipated by the MP3.com Guide and also
rejected the claims alternatively under 35 U.S.C. 103 (a) as obvious over the
MP3.com Guide in view of Wiser (RAN, 30-57). The Requesters agreed
with this position in the Requesters’ Brief at 14-15.
In contrast, the Patent Owner argues that this rejection is improper
(P.O. Br., 25-28).
We agree with the Examiner. The Patent Owner has argued that
claims 1 and 20 recite some form of “video assets” or “video content” and
that the prior art shows static pictures (P.O. Br., 26-28). We determine the
scope of the claims in patent applications “not solely on the basis of the
claim language, but upon giving claims their broadest reasonable
construction ‘in light of the specification as it would be interpreted by one of
ordinary skill in the art.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316
(Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367
F.3d 1359, 1364 (Fed. Cir. 2004)). Here, the claim language argued does
not refer to “complete video” alone but simply rather to the more broad term
of “video assets” or “video content” which may be pieces of the video itself.
That is to say, a complete video is also comprised of the still frame pictures
which may be fairly construed to be part of the “video assets” or “video
content” as claimed in light of the Specification. A Microsoft Computer
Dictionary, Fourth Edition (1999) was cited for a definition in the rejection
and it defines in one definition that “video refers to the rendering of text and
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graphic images on displays” (pg. 468) lending further credence to this
definition and claim construction.
The Patent Owner argues about “requisite frame rates” (P.O. Br. 27)
but such language is not present in the argued claims. The Patent Owner has
not disputed that the cited prior art shows static images and these rejections
of record are therefore sustained as these are considered to be “video assets”
or “video content” under a broadest reasonable interpretation. Regardless,
with regard to the rejection under 35 U.S.C. § 103 (a) even had the claim
cited moving video images as argued, such a modification would have been
readily inferred and obvious to one of ordinary skill in the art at the time the
invention was made to provide moving pictures to the system for an
enhanced customer experience. In KSR Int'l Co. v. Teleflex Inc., 550 U.S.
398 (2007) the Court stated that when considering obviousness that “the
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR at 418. For these reasons, these rejections of record are sustained.

Rejection 19
The Examiner rejected claims 1-10, 12-21, 23-38, 47-63 and 67 under
35 U.S.C. § 102(e) as being anticipated by Medina as proposed on pages 26-
30 of the Requesters’ Response. The Requesters agreed with this position
again in the Requesters’ Brief at pages 13-14.
In contrast, the Patent Owner argues that this rejection is improper
(P.O. Br., 29-32).
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We agree with the Examiner. The Appellants have argued that the
rejection of claim 1 is improper because Medina fails to disclose “a
processor operable to combine video assets supplied by the media content
suppliers, metadata, and digital commerce opportunities to create media
content for use by the consumers” (P.O. Br., 31). The Examiner has cited to
the rejection in the Requesters’ Response which states that the cited claim
limitation is found in the Medina reference at col. 12:60-61, col. 60:36-42,
col. 83:25-37, and Fig. 1B (R.R, 28). Here, Medina, at Fig. 1B, clearly
shows metadata combined with the “CONTENT DB” to create part of the
retail content web site. The Medina citation to col. 60:36-42 also shows that
the metadata may be combined with a music track or video. Fig. 1 also
shows the “digital commerce opportunities” in the eCOMMERCE SERVER
and credit card authorization which allow for the digital download of the
audio or video tracks. For these reasons, this rejection is sustained. The
Appellants has presented similar arguments for claim 20 and its dependent
claims and the rejection of these claims is sustained for these same reasons.

Rejection 23
The Examiner rejected claims 1-10, 12-21, 23-38, 47-63, and 67
under 35 U.S.C. § 103(a) as being unpatentable over Novak in view of the
1999 Press Release (RAN, 64). The Requesters agreed with this position in
the Requesters’ Brief at 15-16.
In contrast, the Patent Owner argues that this rejection is improper
(P.O. Br., 32-33).
We agree with the Examiner. The Patent Owner argues that the Press
Release fails to disclose the limitation from claim 1 requiring a “second
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business rule” for “governing association of the video assets with
merchandise” (P.O. Br., 32-33). The 1999 Press release however states
“consumers may purchase merchandise directly from their television sets or
PC’s as they watch their favorite movie or television show” meeting the
argued claim limitation as such a rule must be present to provide this. For
this reason this rejection is sustained. The Appellants have provided a
similar argument for claim 20 and its dependent claims and the rejection of
these claims is sustained for these same reasons.

Rejections 24 and 25
The Examiner rejected claims 1 and 20 under 35 U.S.C. § 102(e) as
being anticipated by Landress (RAN, 66). The Requesters agreed with this
position in the Requesters’ Brief at 16-17.
In contrast, the Patent Owner argues that this rejection is improper
(P.O. Br., 33-37).
We agree with the Examiner. With regard to claim 1 the Patent
Owner has argued that the cited prior art fails to disclose the claim limitation
for issuing “a license to the consumer making the request upon a
determination that the consumer making the request is permitted to use the
video content” (P.O. Br., 35). However, Landress discloses: obtaining
licensed content at [0070], that technologies are in-licensed when necessary
for communications in the host site [0077], and that adult-content access is
prevented by under-age visitation [0134], which show the argued claim
limitations in the prior art. For these reasons this rejection is sustained.
Similar arguments were presented for claim 20 and this rejection is sustained
for the same reasons given above.
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The Appellants have similarly argued the rejection of claims 2-19, 21-
28, and 40-71 under 35 U.S.C. §§ 102/103 as being unpatentable over
Landress and/or Landress in view of Fritch (P.O Br., 37-38) for failure to
disclose elements of the same claim limitation. However, Fritsch at Fig. 7
does disclose a key system and at Col. 8:22-34 discloses the use of each
song having a digital format that is assigned an identifier or key and that the
key is encrypted or unencrypted over the network which would show the
argued claim limitation for a “licensing server” by some kind of electronic
key distribution. Regardless, with regard to the rejection under 35 U.S.C.
§ 103 the modification of the prior art to issue a license to consumers
permitted to use the content would have been obvious to protect that content.
For these reasons, this rejection is sustained as well with respect to the non-
cancelled claims.

Rejection 26
The Examiner rejected claims 1-10, 12-21, 23-38, 47-63 and 67 under
35 U.S.C. § 103(a) as being unpatentable over Landress in view of Peinado
(RAN, 67) as proposed in the Requesters’ Response at pages 13-25. The
Requesters agreed with this position in the Requesters’ Brief at 12-13.
In contrast, the Patent Owner argues that this rejection is improper
because there is no motivation to combine the references and that the
references teach away from one another (P.O. Br., 38-41).
We agree with the Examiner. Landress is directed to a system for
providing multimedia content to be delivered by the Internet that has content
that is customized to a user (Abstract). Peinado has disclosed an application
that invokes a digital rights management system with a license store for
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22
digital content (Abstract). Here, the modification of Landress by Peinado
would have been obvious so that a license could be granted to protect the
digital content online. Here, the references to not teach away from one
another but are both related to providing content to users and the cited
combination is proper. For these reasons, this rejection of record is
sustained.

Rejections 13-14, 16-18 and 20-22
The Patent Owner has provided the same arguments, and no further
arguments, above for Rejections 13-14, 16-18 and 20-22. These rejections
are sustained for the same reasons given above as the Patent Owner has
provided and no further arguments for these rejections.

G. CONCLUSIONS OF LAW

REJECTIONS UNDER 35 U.S.C. § 112, FIRST PARAGRAPH
1. The rejection of claims 1-10, 12-19 and 47-57 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement is SUSTAINED.

2. The rejection of claims 20-21, 23-38, 58-63 and 67 under 35
U.S.C. § 112, first paragraph is REVERSED.

3. The rejection of claims 20-21, 23-38, 58-63, and 67 under 35
U.S.C. § 112, first paragraph is REVERSED.
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23

4. The rejection of claims 1-10, 12-19, and 47-57 under 35 U.S.C.
§ 112, first paragraph is SUSTAINED.

5. The rejection of claim 10 under 35 U.S.C. § 112, first paragraph is
REVERSED.

6. The rejection of claims 20-21, 23-38, 58-63, and 67
10
under 35
U.S.C. § 112, first paragraph is SUSTAINED.

REJECTIONS UNDER 35 U.S.C. § 112, SECOND PARAGRAPH

7. The rejection of claims 1-10, 12-21, 22-38, and 47-63 under 35
U.S.C. § 112, second paragraph is REVERSED.

8. The rejection of claims 20-21, 23-38 and 58-63 under 35 U.S.C.
§ 112, second paragraph is REVERSED.

9. The rejection of claims 20-21, 23-38 and 58-63 under 35 U.S.C.
§ 112, second paragraph is REVERSED.

10
The RAN indicates that claims 1-10, 12-19, and 47-57 are rejected under
this rejection but this is considered a typographical error since the Examiner
has adopted the Requesters’ proposed rejection form pages 11-12 of the RR
which instead address claims 20-21, 23-38, 58-63, and 67.
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24
10. The rejection of claims 1-10, 12-19, and 47-57 under 35 U.S.C.
§ 112, second paragraph is REVERSED.

11. The rejection of claim 26 under 35 U.S.C. § 112, second
paragraph is REVERSED. The rejection of claim34 under 35 U.S.C. 112,
second paragraph is SUSTAINED.

REJECTIONS UNDER 35 U.S.C. 102 and 35 U.S.C. § 103

12. The rejection of claims 1-9, 15-21, 27-38, 47-63, and 67 under
35 U.S.C. § 102(b) as being anticipated by the MP3.com Guide is
SUSTAINED.

13. The rejection of claims 48-63 and 67 under 35 U.S.C.
§§ 102/103 in further view of Strietzel is SUSTAINED.

14. The rejection of claims 10, 15, 16, 26, 29, and 30 under 35
U.S.C. § 103 (a) as obvious over the MP3.com Guide in view of Medina is
SUSTAINED.

15. The rejection of claims 1-9, 15-21,27-38,47-63, and 67 under
35 U.S.C. § 103 (a) as obvious over the MP3.com Guide in view of Wiseris
is SUSTAINED.

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16. The rejection of claims 4, 10,15,16,26, and 28-30 under 35
U.S.C. § 103(a) as obvious over the MP3.com Guide in view of Katz is
SUSTAINED.

17. The rejection of claims 18-19 under 35 U.S.C. § 103 (a) as
obvious over the MP3.com Guide in view of Idiot's Guide to MP3 is
SUSTAINED.

18. The rejection of claims 17, 36, and 38 under 35 U.S.C.
§ 103 (a) as obvious over the MP3.com Guide in view of 1999 MP3.com
Web Site is SUSTAINED.

19. The rejection of claims 1-10, 12-21, 23-38, 47-63 and 67 under
35 U.S.C. § 102(e) as being anticipated by Medina is SUSTAINED.

20. The rejection of claims 2-7 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Medina in view of The MP3.com Guide
is SUSTAINED.

21. The rejection of claims 8-9, 14 and 17 under 35 U.S.C. § 103(a)
as being unpatentable over Medina in view of Wiser is SUSTAINED.

22. The rejection of claims 27-28 under 35 U.S.C. § 103(a) as
being unpatentable over Medina in view of Herz is SUSTAINED.

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26
23. The rejection of claims 1-10, 12-21, 23-38, 47-63, and 67
under 35 U.S.C. § 103(a) as being unpatentable over Novak in view of the
1999 Press Release is SUSTAINED.

24. The rejection of claims 1 and 20 under 35 U.S.C. § 102(e) as
being anticipated by Landress is SUSTAINED.

25. The rejection of claims 2-10, 12-19, 21, 23-28, 47-63, and 67
under 35 U.S.C. §§ 102/103 as being unpatentable over Landress and/or
Landress in view of Fritch is SUSTAINED.

26. The rejection of claims 1-10, 12-21, 23-38, 47-63 and 67
under 35 U.S.C. § 103(a) as being unpatentable over Landress in view of
Peinado is SUSTAINED.

DECISION
The Examiner’s rejection of claims 1-10, 12-21, 23-38, 47-63, and 67
is sustained.

AFFIRMED

ak

Patent Owner:
Martin & Ferraro, LLP
1557 Lake O’Pines Street, NE
Hartville, OH 44632
Appeal 2012-009466
Reexamination Control Number 95/000,313
Patent 6,925,469 B2

27

Third Party Requester:
John C. Phillips
Fish & Richardson, PC
12390 El Camino Real
San Diego, CA 92130