Ex Parte Brand et alDownload PDFBoard of Patent Appeals and InterferencesApr 6, 200910060676 (B.P.A.I. Apr. 6, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte REON JOHANNES BRAND and MAURICE JOSEPH MCGINLEY __________ Appeal 2008-1293 Application 10/060,676 Technology Center 2400 __________ Decided:1 April 7, 2009 __________ Before LANCE LEONARD BARRY, JEAN R. HOMERE, and STEPHEN C. SIU, Administrative Patent Judges. SIU, Administrative Patent Judge. DECISION ON APPEAL 1 The two month time period for filing an appeal or commencing a civil action, as recited in 37 CFR § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2008-1293 Application 10/060,676 2 STATEMENT OF THE CASE This is a decision on appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-7 and 9-20. Claim 8 has been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The Invention The disclosed invention relates generally to sharing data content (Spec. 1). Specifically, a first user sends a representation of a content item to a second user with a content identifier and a user identifier (Spec. 2). After the second user purchases the data content, a facilitator submits an award to the first user identified by the user identifier (id.). Independent claim 1 is illustrative: 1. A system for facilitating sharing a content item, comprising: a first user device, a facilitating device and a second user device, the first user device comprising means for generating a representation of said content item, said-representation being provided with a content identifier, and means for adding to the representation a user identifier identifying a first user, Appeal 2008-1293 Application 10/060,676 3 the second user device comprising means for receiving the representation including the content identifier and the user identifier from the first user device, means for transmitting the content identifier, the user identifier, and a first payment to the facilitating device in response to the representation of the content item, and means for receiving the content item from the facilitating device in response to the first payment, and the facilitating device comprising payment means for submitting a second payment to the first user in response to reception of the first payment from the second user device. The Reference The Examiner relies upon the following reference as evidence in support of the rejection: Horstmann US 6,363,356 B1 Mar. 26, 2002 (Filed Jul. 16, 1998) The Rejection The Examiner rejects claims 1-7 and 9-20 under 35 U.S.C. § 102(e) as being anticipated by Horstmann. ISSUE #1 The Examiner finds that Horstmann discloses a “computer of a referrer or an associate described in column 1 and shown in Figure 2” (Ans. 3) and equates this disclosure with the “first user device” as recited in claim 1 (id.). Appeal 2008-1293 Application 10/060,676 4 Appellants assert that “the assertion [by the Examiner] that a web-site corresponds to the claimed ‘first user device’, as the term ‘user device’ is used in the art” is incorrect (App. Br. 8). Did Appellants demonstrate that the Examiner erred in finding that a computer of a referrer or an associate is equivalent to a “first user device”? FINDINGS OF FACT The following Findings of Facts (FF) are shown by a preponderance of the evidence. 1. Horstmann discloses a first user or “associate” that “makes a link” to a product (col. 1, ll. 13-15) and that “[t]he [identity] of the referrer may be embedded in the link” such that when a merchant server “receives the link, it extracts the identity of the referrer and takes appropriate action” (col. 1, ll. 22-25). 2. Horstmann discloses a referrer (i.e., “a first user device”) providing “a link” (i.e., “a representation”) that includes “[t]he [identity] of the referrer . . . embedded in the link” (col. 1, ll. 22-23). 3. Horstmann discloses that “the referral information is read and stored in a suitable place on the end user machine” (col. 4, ll. 11-13). 4. Horstmann discloses that the referral information includes “information added to the file [that] may include a referrer identifying information received during a referral from a Web site, or may include a transaction-specific identifier that may be used to Appeal 2008-1293 Application 10/060,676 5 access a database in which various transaction-specific information items are stored, e.g., referrer, offer information etc” (col. 2, l. 65 – col. 3, l. 3). 5. Horstmann discloses that “after the product has been downloaded to the end user machine, the user initiates installation of the product” (col. 4, ll. 4-6) after which time, the “EC client may . . . inform the end user of the time remaining during which the product may be used without purchase and give the user an opportunity to purchase the product” (col. 4, ll. 16-20). 6. Horstmann discloses a referrer device providing “a link” that represents a product from a merchant (col. 1, ll. 15-16). PRINCIPLES OF LAW 35 U.S.C. § 102 In rejecting claims under 35 U.S.C. § 102, “[a] single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm. Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted). “Anticipation of a patent claim requires a finding that the claim at issue ‘reads on’ a prior art reference.” Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1346 (Fed Cir. 1999) (“In other words, if granting patent protection on Appeal 2008-1293 Application 10/060,676 6 the disputed claim would allow the patentee to exclude the public from practicing the prior art, then that claim is anticipated, regardless of whether it also covers subject matter not in the prior art.”) (Internal citations omitted). ANALYSIS (ISSUE #1) We agree with the Examiner that a “computer of a referrer” includes a “user device.” Appellants argue that a web-site does not correspond to a “user device.” In contrast, the Examiner finds that a computer corresponds to the user device, as claimed. We find that Appellants fail to demonstrate a distinction between a computer and a “user device” as claimed. Therefore, we conclude that Appellants have not sustained the requisite burden on appeal in providing arguments or evidence persuasive of error in the Examiner’s rejection of claims 1-5, 10-15, 16, and 20 with respect to issue #1. ISSUE #2 The Examiner finds that Horstmann discloses that “the machine embeds the information which the merchant relied on to identify the referrer so as to credit the referrer” (Ans. 3) at col. 1, ll. 21-26 and equates this disclosure with the “adding to the representation a user identifier identifying a first user” recited in claim 1 (id.). Appeal 2008-1293 Application 10/060,676 7 Appellants assert that “Horstmann adds an identifier to the request from the end user to obtain the download from the merchant site” but “does not add a user identifier to the referral message that is sent to the end user machine” (App. Br. 9). Did Appellants demonstrate that the Examiner erred in determining that Horstmann discloses adding to the representation a user identifier identifying a first user? ANALYSIS (ISSUE #2) Horstmann discloses a first user or “associate” that “makes a link” to a product (col. 1, ll. 13-15) and that “[t]he [identity] of the referrer may be embedded in the link” such that when a merchant server “receives the link, it extracts the identity of the referrer and takes appropriate action” (col. 1, ll. 22-25). Because the referrer or associate (i.e., “first user”) in the Horstmann system provides a link that represents identity information embedded within (i.e., a link being a “representation” of identity information), we agree with the Examiner that Horstmann discloses adding a user identifier (i.e., “identity information”) to the link because in order for such information to be present in the link, the information must have been added to the link. For at least the aforementioned reasons, we conclude that Appellants have not sustained the requisite burden on appeal in providing arguments or evidence persuasive of error in the Examiner’s rejection of claims 1-3 and 10-15 with respect to issue #2. Appeal 2008-1293 Application 10/060,676 8 ISSUE #3 Appellants assert that Horstmann discloses “the Web server, not the referring Web site, provides the identifying information to the end user machine” (App. Br. 10) and that Horstmann “fails to teach a second user device that receives a representation including a content identifier and a user identifier from the first user device (id.). Did Appellants demonstrate that the Examiner erred in determining that Horstmann discloses a second user device that receives a representation including a content identifier and a user identifier from the first user device? ANALYSIS (ISSUE #3) As set forth above, Horstmann discloses a referrer (i.e., “a first user device”) providing “a link” (i.e., “a representation”) that includes “[t]he [identity] of the referrer . . . embedded in the link” (col. 1, ll. 22-23) and that “the referral information is read and stored in a suitable place on the end user machine” (col. 4, ll. 11-13). The referral information includes “information added to the file [that] may include a referrer identifying information received during a referral from a Web site, or may include a transaction-specific identifier that may be used to access a database in which various transaction-specific information items are stored, e.g., referrer, offer information etc” (col. 2, l. 65 – col. 3, l. 3). Hence, Horstmann discloses an end user machine (i.e., “second user device”) receiving and storing referral Appeal 2008-1293 Application 10/060,676 9 information that includes referrer identifying information (i.e., “a user identifier identifying a first user”) and/or “a transaction-specific identifier” (i.e., “content identifier”) from the referrer (i.e., “first user device”). Appellants argue that Horstmann discloses “the Web server, not the referring Web site, provides the identifying information to the end user machine” (App. Br. 10). We disagree. As set forth above, Horstmann discloses that the identity of the referrer is embedded in the link from the referrer, received at a merchant’s Web site, and extracted. The extracted information that includes referrer identifying information is then transmitted to and stored on the second user’s device (i.e., end user device). Because the referrer identifying information is provided by the first user device (i.e., “referrer”), we agree with the Examiner that the identifying information is received from the device that provides the information (i.e., the “first user device” or “referrer”). For at least the aforementioned reasons, we conclude that Appellants have not sustained the requisite burden on appeal in providing arguments or evidence persuasive of error in the Examiner’s rejection of claims 1-5 and 10-16 with respect to issue #3. ISSUE #4 Appellants assert that “Horstmann cannot be said to teach ‘receiving the content item from the facilitating device in response to the first payment’” (App. Br. 11) because “Horstmann specifically distinguishes Appeal 2008-1293 Application 10/060,676 10 between a ‘Buy before you Try’ and ‘try before you Buy’, and specifically teaches a ‘Try before you Buy’ system” (App. Br. 11). Appellants also argue that “Horstmann specifically teaches receiving the content item before payment is made” (id.). The Examiner finds that Horstmann “also teaches a Buy Before You Try System” and that “merchandise is downloaded only after payment is received” (Ans. 5). Did Appellants demonstrate that the Examiner erred in determining that Horstmann discloses receiving the content item from the facilitating device in response to the first payment? ANALYSIS (ISSUE #4) Horstmann discloses that “after the product has been downloaded to the end user machine, the user initiates installation of the product” (col. 4, ll. 4-6) after which time, the “EC client may . . . inform the end user of the time remaining during which the product may be used without purchase and give the user an opportunity to purchase the product” (col. 4, ll. 16-20). Hence, in Horstmann, if the end user does not pay for the downloaded product within the specified time period, the downloaded product becomes inactivated and can no longer be used. If the end user purchases the downloaded product (i.e., makes a “payment”) within the specified trial period, the end user obtains the full product, including the full digital rights to the product. In that case, the product does not become inactivated. Appeal 2008-1293 Application 10/060,676 11 Based on this analysis, we find that Horstmann discloses that the end user receives the content item (which includes digital rights to the activated version of the product) after making a payment (i.e., “purchasing” the product). Prior to making payment, the end user in Horstmann does not possess at least the digital rights to the downloaded content as evidenced by the fact that the product becomes deactivated after a specified time period if the end user fails to make the payment within the specified time. As such, we disagree with Appellants’ argument that “Horstmann specifically teaches receiving the content item before payment is made.” For at least the aforementioned reasons, we conclude that Appellants have not sustained the requisite burden on appeal in providing arguments or evidence persuasive of error in the Examiner’s rejection of claims 1-7 and 9- 20 with respect to issue #4. ISSUE #5 The Examiner finds that Horstmann discloses “generating a representation (the representation of the electronic content in the referrer’s or the associate’s web-site, see column 1 in Horstmann) of said content item (see ‘electronic content’ in line 29 of column 1)” (Ans. 3). Appellants assert that “[w]eb sites do not conventionally generate representation; representation are generated elsewhere and placed on a Web site as items that are to be displayed/transmitted to the user” (App. Br. 11- 12). Appeal 2008-1293 Application 10/060,676 12 Did Appellants demonstrate that the Examiner erred in determining that Horstmann discloses generating a representation of the content item? ANALYSIS (ISSUE #5) As set forth above, Horstmann discloses a referrer device providing “a link” that represents a product from a merchant (col. 1, ll. 15-16). Because the referrer device generates the link and the link represents content, we agree with the Examiner that Horstmann discloses a user’s device generating a representation of content. Appellants argue that “[w]eb sites do not conventionally generate representation” (App. Br. 11). We find no relevance in Appellants’ argument, even assuming the argument to be accurate, because whether web sites do not generate representations does not pertain to whether Horstmann discloses a user’s device that generates representation of content such as a link. For at least the aforementioned reasons, we conclude that Appellants have not sustained the requisite burden on appeal in providing arguments or evidence persuasive of error in the Examiner’s rejection of claims 1-4, 10- 15, and 20 with respect to issue #5. Appeal 2008-1293 Application 10/060,676 13 ISSUE #6 Appellants assert that “[t]he Office action fails to identify where Horstmann teaches that the representation that is sent to the end user machine from the referring Web site includes any of these items [a sequence of the content, a sequence of still images from a movie clip, a sequence of music from a music track, a text message, and a personal message from the first user]” (App. Br. 12). Did Appellants demonstrate that the Examiner erred in determining that Horstmann discloses specific content of the data representation? ANALYSIS (ISSUE #6) We find that the data content of the representation, such as a sequence of content, still images, sequence of music, a text message, or a personal message, constitutes non-functional descriptive material and therefore cannot be accorded patentable weight. When “non functional descriptive material” is recorded or stored in a memory or other medium (i.e., substrate) it is treated as analogous to printed matter cases where what is printed on a substrate bears no functional relationship to the substrate and is given no patentable weight. See In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (“Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability. Although the printed matter must be considered, in that situation it may not Appeal 2008-1293 Application 10/060,676 14 be entitled to patentable weight.”). The Examiner need not give patentable weight to descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate. See In re Lowry, 32 F.3d 1579, 1582-83 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004). See also Ex parte Nehls, http://www.uspto.gov/web/offices/dcom/bpai/prec/fd071823.pdf (BPAI Jan. 28, 2008); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (nonprecedential) (191 Fed. Appx. 959 (Fed. Cir. 2006)). In the present case, whether the representation of content includes a sequence of music, text, or personal messages, for example, does not alter, modify, or otherwise impact the functions of the system. Hence, the data itself, be it music, text, personal messages, or other types of data in sequence, bears no functional relationship to the substrate (i.e., the storage or cache memory) of the system. Therefore, we accord these limitations no patentable weight as non-functional descriptive material. For at least the aforementioned reasons, we conclude that Appellants have not sustained the requisite burden on appeal in providing arguments or evidence persuasive of error in the Examiner’s rejection of claims 3, 10-12, and 15 with respect to issue #6. Appeal 2008-1293 Application 10/060,676 15 ISSUE #7 Appellants assert that Horstmann does not disclose “compensating the referrer based on receipt of payment from the potential buyer” (Reply Br. 3). Did Appellants demonstrate that the Examiner erred in determining that Horstmann discloses submitting a second payment to the first user in response to reception of the first payment from the second user device? ANALYSIS (ISSUE #7) Horstmann discloses that a user may “purchase the product . . . by clicking on a Buy button” (col. 4, ll. 20-21) and that “[d]uring payment . . . the payment processor receives the referral information . . . [and] automatically credits an account of the referrer” (col. 4, ll. 22-26). Because Horstmann discloses an end user submitting a payment (i.e., by clicking the Buy button) and the system crediting an account of the referrer (i.e., making a second payment to the referrer), we agree with the Examiner that Horstmann discloses a device submitting a second payment to the first user (i.e., “referrer”) in response to reception of the first payment from the second user device (i.e., end user). For at least the aforementioned reasons, we conclude that Appellants have not sustained the requisite burden on appeal in providing arguments or evidence persuasive of error in the Examiner’s rejection of claims 1-7 and 9-20 with respect to issue #7. Appeal 2008-1293 Application 10/060,676 16 CONCLUSIONS OF LAW Based on the findings of facts and analysis above, we conclude that Appellants have failed to demonstrate that the Examiner erred in: 1. finding that a computer of a referrer or an associate is equivalent to a “first user device” (issue #1), 2. determining that Horstmann discloses a means for adding to the representation a user identifier identifying a first user (issue #2), 3. determining that Horstmann discloses a second user device that receives a representation including a content identifier and a user identifier from the first user device (issue #3), 4. determining that Horstmann discloses receiving the content item from the facilitating device in response to the first payment (issue #4), 5. determining that Horstmann discloses generating a representation of the content item (issue #5), 6. determining that Horstmann discloses specific content of the data representation (issue #6), and 7. determining that Horstmann discloses submitting a second payment to the first user in response to reception of the first payment from the second user device (issue #7). DECISION We affirm the Examiner’s decision rejecting claims 1-7 and 9-20 under 35 U.S.C. § 102(e). Appeal 2008-1293 Application 10/060,676 17 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED pgc PHILIPS INTELLECTUAL PROPERTY & STANDARDS P.O. BOX 3001 BRIARCLIFF MANOR NY 10510 Copy with citationCopy as parenthetical citation