Ex parte Allen

Board of Patent Appeals and Interferences

Aug 24, 1999

08280039 (B.P.A.I. Aug. 24, 1999)

Application for patent filed July 25, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JONATHAN B. ALLEN
_____________
Appeal No. 97-3665
Application 08/280,0391
______________
ON BRIEF
_______________
Before HAIRSTON, JERRY SMITH & LEE, Administrative Patent
Judges.
LEE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the examiner's rejection of claims 1-41. No claim has been
allowed.
References relied on by the Examiner
Stringer et. al. 5,341,429 Aug. 23, 1994
(Stringer)
The Rejections on Appeal
Appeal No. 97-3665
Application 08/280,039
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Claims 1-41 stand rejected under 35 U.S.C. § 102(e) as
being unpatentable over Stringer.
Appeal No. 97-3665
Application 08/280,039
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The Invention
The invention is directed to a method and system for
sending data over a communication network to authorized
individuals. Claims 1, 17, 26, 31 and 37 are independent
claims. Representative claim 1 is reproduced below:
1. A method of delivering data over a
communication network, comprising the steps of:
generating a partially-degraded version of the
data by altering a portion of the data to reduce its
perceived quality when utilized;
providing the partially-degraded version of the
data over the network to a customer at a user
terminal connected to the network; and
providing a higher quality version of the data
to the customer over the network if the customer is
entitled to receive the higher quality version.
Opinion
We affirm-in-part.
Our affirmance of the rejection of some claims is based
only on the arguments presented by appellant in his appeal
brief. Arguments which could have been raised but not
actually raised and presented in the briefs are not before us,
are not at issue, and are considered as waived. We do not
undertake to re-examine the application ab initio.
Appeal No. 97-3665
Application 08/280,039
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Anticipation is established only when a single prior art
reference discloses, either expressly or under the principles
of inherency, each and every element of the claimed invention.
In re Spada, 911 F.2d 705, 707, 15 USPQ2d 1655, 1657 (Fed.
Cir. 1990); RCA Corp. v. Applied Digital Data Sys., Inc., 730
F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.Cir. 1984). See also
In re
King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986);
Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick
Co., 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
The prior art reference must either expressly or inherently
describe each and every limitation in a claim. Verdegaal
Bros. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053
(Fed. Cir.), cert. denied, 484 U.S. 827 (1987).
All of the appellant’s claims on appeal require the
delivery of data to a user terminal on a communications
network. According to the appellant (Br. at page 11),
Stringer discloses neither a method nor system for delivering
data over a “communications network” and thus cannot
anticipate the appellant’s claimed invention. The argument is
without merit.
Appeal No. 97-3665
Application 08/280,039
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Claim terms are properly given their broadest reasonable
interpretation during patent examination. In re Zletz, 893
F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1990); In re
Pearson, 494 F.2d 1399, 1404, 181 USPQ 641, 645 (CCPA 1974);
In re Prater, 415 F.2d 1393, 1404, 162 USPQ 541, 550 (CCPA
1969). The term "communications network" is not limited to
any particular type of communication, either wireless, by
cable, or even bidirectional. Extraneous features cannot be
read from the specification into the claims. E.I. du Pont de
Nemours & Co. v. Phillips Petroleum Co., 849 F.2d 1430, 1433,
7 USPQ2d 1129, 1131 (Fed. Cir. 1988). Here, it is not
necessary to read in limitations from the specification to
make sense of the term "communications network."
Since there is no requirement for bidirectional
communication, transmission by public broadcasting for
reception by a plurality of radio receivers constitutes a form
of communications network. In column 4, lines 49-51, Stringer
describes an embodiment in which denatured versions of data
are transmitted by radio broadcasting. Thus, the network is
comprised of a single transmitter, the broadcasting station,
and a plurality of receivers tuned in to the transmission
Appeal No. 97-3665
Application 08/280,039
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frequency. The receivers constitute the user terminals. It
does not matter that the receivers do not provide any
indication of receipt back to the source of transmission.
Bidirectional communication is not required by the claims. In
any event, Stringer contemplates that an interested user make
a telephone call to the source of transmission to make a
purchase of the transmitted data (column 4, lines 36-40). The
telephone lines are reasonably deemed a part of the
communications network used, and none of the appellant’s
claims requires that any particular data travel all legs of
the communications network.
The appellant further argues (Br. at 9) that in a
particular embodiment disclosed in Stringer, the perceived
quality of data is exactly the same for both the evaluation
version and for the actual version upon purchase, whereas the
claimed invention requires the two versions to be different in
quality. The argument is without merit since it discusses
only a particular embodiment of Stringer and ignores other
embodiments which include versions of different quality, one
for evaluation, and one for purchase. See examples 2, 3, and
4 described in Stringer’s columns 12-13.
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Application 08/280,039
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For the foregoing reasons, we will sustain the rejection
of claims 1-5, 7-10, 14, 17-19, 21, and 23-38.
For claims 6, 11, 12, 13, 15, 16, 20, 22, 39, 40 and 41,
the appellant makes separate arguments urging their
patentability. We agree with the appellant with respect to
claims 6, 12, 13, 15, 16, 22, 40, and 41. The examiner has
not addressed the issues raised by the appellant.
With respect to claims 11, 20, and 39, however, the
appellant’s arguments are without merit. As for claim 11, in
column 9, lines 18-24 of Stringer, it is described that the
denaturing process uses an encryption algorithm and that to
enable the product a special enable program is activated by a
code number. The code constitutes a decryption key.
Evidently, the code is transmitted to the user upon making a
purchase. See column 4, lines 36-40. As for claim 20, note
that in Stringer an access code is transmitted to the user
only when a credit card number is provided by a telephone call
to make a purchase. See column 4, lines 33-40. That
satisfies the requirement of determining if royalty payment
has been received. As for claim 39, we have already discussed
above how the wireless broadcasting of Stringer constitutes a
Appeal No. 97-3665
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communications network. Accordingly, Stringer does disclose
the transmission of a partially degraded version over a
communications network.
Accordingly, the rejection of claims 6, 12, 13, 15, 16,
22, 40 and 41 cannot be sustained. We will, however, sustain
the rejection of claims 11, 20 and 39.
Conclusion
The rejection of claims 1-5, 7-11, 14, 17-21, and 23-39
under 35 U.S.C. § 102(e) as being anticipated by Stringer is
affirmed.
The rejection of claims 6, 12, 13, 15, 16, 22, 40 and 41
under 35 U.S.C. § 102(e) as being anticipated by Stringer is
reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Appeal No. 97-3665
Application 08/280,039
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KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JAMESON LEE )
Administrative Patent Judge )
Appeal No. 97-3665
Application 08/280,039
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