Ex Parte Bates et al

Board of Patent Appeals and Interferences

Feb 1, 2011

09749106 (B.P.A.I. Feb. 1, 2011)

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.
09/749,106 12/27/2000 Cary Lee Bates ROC920000234US1 6268
46797 7590 02/02/2011
IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829
EXAMINER
SCHNURR, JOHN R
ART UNIT PAPER NUMBER
2421
MAIL DATE DELIVERY MODE
02/02/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARY LEE BATES and PAUL REUBEN DAY
____________

Appeal 2009-014016
Application 09/749,106
Technology Center 2400
____________

Before MAHSHID D. SAADAT, MARC S. HOFF, and
CARLA M. KRIVAK, Administrative Patent Judges.

KRIVAK, Administrative Patent Judge.

DECISION ON APPEAL1
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claim 5. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-014016
Application 09/749,106

2
STATEMENT OF THE CASE
Appellants’ claimed invention is a method for pricing programming
events viewed by multiple viewers (Spec. 1:6-8).
Independent claim 5, reproduced below, is the only claim on appeal.
5. A method for determining a price of a program transmitted
by a programming provider to subscribers, comprising:

receiving, via a network connection, a purchase order for a
program from a subscriber belonging to a subscriber group
defined by two or more subscribers, wherein each subscriber
belonging to the subscriber group maintains an independent
account with the programming provider whereby the subscriber
pays the programming provider in order to receive paid for
programming, wherein each subscriber belonging to the
subscriber group may elect to purchase or not purchase the
program, and wherein the programming provider maintains a
plurality of subscriber groups, wherein each group includes a
subset of subscribers and wherein members of each subscriber
group are determined prior to an offer to purchase the program;

offering, to a first subscriber group of the plurality of subscriber
groups, the program to purchase at a predetermined price;

determining a first price for the purchase order if the program
has been purchased by a threshold number of subscribers
belonging to the first subscriber group; and

determining a second price, higher than the first price, if the
program has not been purchased by the threshold number of
subscribers belonging to the first subscriber group, wherein the
threshold number of subscribers belonging to the first
subscriber group purchasing the program is all the subscribers
of the first subscriber group.

Appeal 2009-014016
Application 09/749,106

3
The Examiner rejected claim 5 under 35 U.S.C. § 103(a) based upon
the teachings of and Bonomi (US 6,769,127 B1), Sartain (US 5,914,712),
and Pallakoff (US 6,269,343 B1).
The Examiner finds Bonomi does not teach or suggest a list of
subscribers including a plurality of subscriber groups and that each group
includes a subset of subscribers and members are determined prior to an
offer to purchase (Ans. 4). The Examiner then finds Sartain discloses this
feature and states it would be obvious to modify Bonomi accordingly (Ans.
4). The Examiner also finds Pallakoff discloses determining a price based
upon a threshold number of purchasers (Ans. 5).
Appellants contend Bonomi cannot be combined with Sartain and that
Bonomi teaches sway from such a modification (App. Br. 11; Reply Br. 4).
That is, Appellants note that Bonomi “caters to individuals” and Sartain
“caters to groups” (App. Br. 11; Reply Br. 4). Appellants also contend
Bonomi teaches away from such combination (App. Br. 11; Reply Br. 4).
The Examiner “concedes that . . . updating a list of subscribers in
Bonomi is not clearly improved by the subscriber grouping of Sartain,” but
Sartain allows each headend to contain only content specific to each group,
thus providing a more effective way to distribute content (Ans. 7).
As asserted by Appellants, Bonomi teaches providing on-demand
broadcasts, which are not scheduled, but rather, are real-time requests.
Further, we agree with Appellants that Bonomi’s content delivery model is
for individuals and not groups. The Examiner has provided no explanation
for the assertion Bonomi can be modified by Sartain for providing
customized services. Bonomi already provides this advantage by seeking to
Appeal 2009-014016
Application 09/749,106

4
achieve a higher level of granularity for customizing an individual users’
service of a common subscriber account. (App. Br.11; Reply Br. 4-5)

DECISION
The Examiner’s decision rejecting claim 5 is reversed.

REVERSED

kis

IBM CORPORATION, INTELLECTUAL PROPERTY LAW
DEPT 917, BLDG. 006-1
3605 HIGHWAY 52 NORTH
ROCHESTER, MN 55901-7829