Ex Parte Brand et al

Board of Patent Appeals and Interferences

Apr 6, 2009

10060676 (B.P.A.I. Apr. 6, 2009)

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
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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).

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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,

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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.).
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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
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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

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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.).
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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.
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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
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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
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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.
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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).
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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.

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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
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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.

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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.

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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).
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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

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