Ex Parte Burkholder

Board of Patent Appeals and Interferences

Jun 27, 2011

11437111 (B.P.A.I. Jun. 27, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/437,111 05/18/2006 Thomas Burkholder APL1P476/P4033US1 9728
67521 7590 06/28/2011
TI Law Group
2055 Junction Avenue, #205
San Jose, CA 95131-2116
EXAMINER
OBEID, MAMON A
ART UNIT PAPER NUMBER
3621
MAIL DATE DELIVERY MODE
06/28/2011 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 THOMAS BURKHOLDER
____________

Appeal 2010-004213
Application 11/437,111
Technology Center 3600
____________

Before, MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/437,111

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1, 2, 4-14 and 19. Claims 15-18, 20-23 are
withdrawn. A hearing was held on June 7, 2011. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
We AFFIRM-IN-PART.

The Examiner relies upon the following as evidence of
unpatentability:
Downs US 6,226,618 B1 May 1, 2001
Postrel US 2005/0021400 A1 Jan. 27, 2005
Macdonald US 2007/0198418 A1 Aug. 23, 2007

The Examiner rejected claims 1-2, 4-14, and 19 over Postrel in view
of Macdonald and further in view of Downs.
Claim 1 is representative:
1. A method for acquiring a media item from an online media store
using a credit, said method including at least:
(a) identifying a media item being purchased by a purchaser, the
media item having a purchase cost associated therewith;
(b) determining whether the media item is permitted to be acquired
using an item credit, the determining being based on at least the
purchase cost and the country of origin for the purchaser;
(c) determining whether the purchaser has at least one item credit
available at the online media store; and
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(d) thereafter applying the item credit associated with the purchaser
so as to reduce or eliminate the purchase cost of the media item when
said determining (b) determines that the media item is permitted to be
acquired using an item credit.
FINDINGS OF FACT
1. We adopt the Examiner’s findings for claims 5, 6 and 10 as our
own.
2. The Examiner found that the step of determining whether the media
item is permitted to be acquired using an item credit is disclosed by
Postrel when the step of determining reward points can be used to
acquire an item occurs. (Answer 19).
3. Postrel discloses: “if a user uses his smart card to pay for a hotel
that normally gives reward points, those reward points may be stored
on the smart card in an account associated with that hotel.” (¶ 0027]).
4. Postrel discloses “[t]he merchant server computer would confirm
that the user has sufficient points or value to purchase the selected
item by communicating with the trading server 20 via communication
flows 140, 144 in order to check the user's reward exchange account
54 (step 710). (¶ [0078]).

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5. Downs discloses:
If there are any restrictions for the sale of Content 113 in the
country where the End-User(s) resides, then the
Clearinghouse(s) 105 insures that the transaction being
processed is not violating any of those restrictions before
transmitting License SC(s) 660 to the End-User Device(s) 109.
The Electronic Digital Content Store(s) 103 is also expected to
participate in managing the distribution of Content 113 to
various countries by performing the same checks as the
Clearinghouse(s) 105. The Clearinghouse(s) 105 does whatever
checking that it can in case the Electronic Digital Content
Store(s) 103 is ignoring the country specific rules set by the
Content Provider(s) …. The Clearinghouse(s) 105 maintains a
Audit Logs 150 of information for each operation that is
performed during Content 113 purchase transactions and report
request transactions. …The Clearinghouse(s) 105 also
maintains account balances in Billing Subsystem 182 for the
Electronic Digital Content Store(s) 103. Pricing structures for
the Electronic Digital Content Store(s) 103 is provided to the
Clearinghouse(s) 105 by the digital content labels.

(Col. 32 ll. 33-57).
6. The Examiner found:
Postrel further discloses other rewards in the form
of coupons and/ or rebates (corresponding to
Appellants' "Invitation"), wherein the coupon,
rebates including an Identifier (corresponding to
Appellants' "credit code") and a coupon/rebate
value (¶¶ [0054]; [0076]). Alternatively, it's
fundamental in the art that coupons/rebates must
include some form of identifier (see, for example,
Macdonald @ (¶ [0028]). Postrel further discloses
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user/purchaser's card, wherein the card balance is
increased by the amount equal to value of the
coupon/rebate (¶ [0062] - [0064], [0076], figure 6-
step 621).
(Answer 15, 16).
ANALYSIS
We affirm the rejection of claims 1, 5-10, 12-14 and 19 and reverse as
to claims 2, 4 and 11.
Claims 1, 9 and 19.
Independent claims 1 and 19 each require
(b) determining whether the media item is
permitted to be acquired using an item credit, the
determining being based on at least the purchase
cost and the country of origin for the purchaser
(c) determining whether the purchaser has at least
one item credit available at the online media store;.
We find that Postrel discloses determining whether the media item is
permitted to be acquired using an item credit because, “if a user uses his
smart card to pay for a hotel that normally gives reward points, those reward
points may be stored on the smart card in an account associated with that
hotel.” (FF 3). We find that the phrase “a hotel that normally gives reward
points” connotes a conditional determination of whether the system permits
rewards points to be used to pay for a stay at a given hotel. Thus, we find
that Postrel meets the claim limitation of determining whether the media
item is permitted to be acquired using an item credit.
Concerning the conditional limitations of requiring the determining
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step (b) to be based on the purchase cost and the country of origin for the
purchaser, we find that the Examiner found that
Downs discloses the Clearinghouse(s) 105 uses the
domain name of the End-UserDevice(s) 109 and,
whenever possible, the credit card billing address
to determine the country location of the End-
User(s) (Downs: column 45[,] lines 29-44).
(Answer 5). Our review of Downs confirms that the country of origin of the
credit card drives whether or not an item may be purchased in the country
where the End-User(s) resides so as not to violate any restriction before
transmitting a License. (FF 5) Thus, Downs discloses the required
determining being based on the country of origin for the purchaser.
Appellant in turn argues the non-combinability of Down with Postrel
stating that:
There is no need nor is it necessary for Postrel to
make a determination based upon the country of
origin for the user. Postrel only cares about and
determines whether the purchaser has enough
credits to purchase the product. As long as the
purchaser has enough credits, Postrel will
indiscriminately allow the purchaser to purchase
the product using the credits.
(Appeal Br. 8).
We disagree with Appellant. We find that restrictions on sales to people
in a given country would be applicable to nearly all offers of items because
restrictions may depend on the political climate existing between involved
countries. In the case of the airline travel disclosed in Postrel, restrictions on
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tickets obtained via credits may be otherwise too easily obtained by ill
willed purchasers or in countries with high rates of fraud. In the case of
Macdonald, where digital media is of consequence, restrictions on sales to
countries, where intellectual property rights of the owner are not protected,
save pirating of the content. “Under the correct analysis, any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 1742.
Regarding the limitation (b) requiring the determining step to be also
based on the purchase cost, we find that Downs discloses that sale of content
to a country involves the transmission of a License controlled by the
Electronic Digital Content Store 103, which Store also controls pricing
structures for the content. (FF 5). We find that the grant of a license is
inherently based on the price of the content recovered by the licensor
through the license royalty.
The argument as to claim 10 is substantially the same as for
independent claim 1 and 19 and as such we affirm for the same reasons.
Claims 2, 4, and 11
Each of claims 2, 4 and 11 require "determining a media type for the
media item" and "determining whether the media type for the media item is
permitted to be acquired using an item credit." The Examiner found that
Macdonald discloses acquiring digital media using a voucher (Answer 4),
but we find that Macdonald fails to disclose or make obvious a decision
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based on media type. We therefore will not sustain the rejection of these
claims.
Claims 5 and 6
Representative claim 5 recites in pertinent part, "wherein said
determining (b) accesses a data table storing at least the purchase cost for the
media item to determine whether the media item is permitted to be acquired
using item credits."
We find for the Examiner because Downs discloses a data table 35
U.S.C. § 103(a) storing at least the purchase cost for the media items (FF 5)
and a person with ordinary skill in the art would know to combine this
feature with the merchant computer in Postrel (FF 4) so that a comparison
can occur at a single processor between the purchase cost and the accrued
points of the user.
Claim 13
Claim 13 recites in pertinent part
(f) receiving a credit code associated with a credit invitation; and
(g) increasing the item credit available for the purchaser based on an amount
of credit associated with the credit code.
The Examiner’s findings are set forth in (FF 6).
Appellant argues that the trading server only obtains rewards points
without the required credit code.
We agree with the Examiner that within the context of the
embodiment cited by the Examiner in his finding (FF 6), that the issuing of a
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coupon is an invitation to obtain greater value in a credit account and that
such an invitation would inherently have to have a code to track its
authenticity.
We also affirm the rejection of dependent claims 7-9, 12 and 14 since
Appellant has not challenged such with any reasonable specificity (see In re
Nielson, 816 F.2d 1567 (Fed. Cir. 1987)).

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1, 5-10, 12-
14 and 19.
We conclude the Examiner erred in rejecting claims 2, 4 and 11.

DECISION
AFFIRMED IN PART

MP