Ex Parte Darago et al

Patent Trial and Appeal Board

Sep 27, 2016

14164178 (P.T.A.B. Sep. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/164,178
23484 7590
John Ogilvie
2148 E. 11270 S.
Sandy, UT 84092
FILING DATE FIRST NAMED INVENTOR
01125/2014 Vincent S. Darago
09/29/2016
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5045.2.lG 2587
EXAMINER
HOANG, HIEU T
ART UNIT PAPER NUMBER
2452
NOTIFICATION DATE DELIVERY MODE
09/29/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
john@OgilvieLawFirm.com
johnwogilvie@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VINCENT S. DARAGO and
CHRISTOPHER JENKINS 1
Appeal2015-005867 2
Application 14/164, 178
Technology Center 2400
Before ADAM J. PYONIN, AMBER L. HAGY, and SHARON PENICK,
Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 38-53 and 58---61. 3 We have jurisdiction over
these claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Digital-Vending Services International LLC as the real
party in interest. (App. Br. 1.)
2 Appellants identify pending Application No. 14/294,871 ("the '871
Application") as the parent of the application that is the subject of the
present appeal. (App. Br. 1.) The '871 Application is the subject of co-
pending Appeal No. 2015-005869.
3 Claims 1-37 and 54--57 have been canceled. (App. Br. 9, 11.)
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Application 14/164, 178
Introduction
According to Appellants, "[t]he present invention relates to content
delivery over a large computer network, and more particularly to a computer
network architecture which integrates management components such as a
reservation system, a funds flow system, a metering system, and a security
system for preventing unauthorized use of courseware and other content."
(Spec. 1:11-14.)
Exemplary Claim
Claim 3 8, reproduced below, is exemplary of the claimed subject
matter:
3 8. A system for managing shared courseware content, the
system comprising:
a server computer having a memory configured with
courseware content serving software in operable
communication with a processor of the server computer;
a pseudo-random number generator configured to generate a
sequence of pseudo-random numbers;
a manager configured to prevent the content serving software
from serving courseware content to a personal computer if
the pseudo-random numbers are not paired with
corresponding numbers from the personal computer; and
a content server date/time stamp which agrees with a reset
date/time stamp of the personal computer;
wherein the system is configured to meter use of the courseware
content.
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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ananda
Lawlor et al.
Peters et al.
Siefert
Gregg et al.
us 5,548,645
US 6,202,054 B 1
US 6,332,167 Bl
US 2001/0055749 Al
US 2002/0002688 Al
REJECTIONS
Aug. 20, 1996
Mar. 13, 2001
Dec.18,2001
Dec. 27, 2001
Jan.3,2002
Claims 38--48 and 51-53 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ananda, Lawlor, and Official Notice. (Final Act.
6-13.)
Claims 49 and 50 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ananda, Lawlor, Official Notice, and Peters. (Final Act.
13-15.)
Claim 58 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ananda and Lawlor. (Final Act. 15-16.)
Claims 59 and 60 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ananda, Lawlor, and Gregg. (Final Act. 17-18.)
Claim 61 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ananda, Lawlor, and Peters. (Final Act. 18-19.)
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ISSUE4
The issue presented by Appellants' contentions is whether the
Examiner erred in finding the combination including Ananda and Lawlor5
teaches or suggests the limitations of claim 38, and, in particular, whether
the Examiner properly combined those references.
ANALYSIS
Appellants principally refer the Board to the arguments presented by
Appellants in a response, dated August 22, 2014, to the Office Action of
August 4, 2014. (App. Br. 6, 7.) As an initial matter, we note Appellants'
argument by reference is improper, as Appellants must present all arguments
in Appellants' briefing to the Board. See 37 C.F.R. § 41.37(c)(l)(iv) ("[A]ny
arguments or authorities not included in the appeal brief will be refused
consideration by the Board."); see also DeSilva v. DiLeonardi, 181 F.3d 865,
867 (7th Cir. 1999) ("[I]ncorporation [by reference] is a pointless imposition
on the court's time. A brief must make all arguments accessible to the
judges, rather than ask them to play archaeologist with the record."). We
have, however, reviewed Appellants' cited response, and we do not find it
any more persuasive than Appellants' abbreviated arguments on appeal. As
4 Although the claims are subject to rejections on different grounds and
different combinations of references, as noted above, Appellants argue only
the Examiner's findings regarding claim 38 and the Ananda and Lawlor
references. (App. Br. 4--8; Reply Br. 1-3.) Appellants state: "For the
purpose of this Appeal only, the claims are grouped together." (App. Br. 4.)
Therefore, we select claim 3 8 as the representative claim, pursuant to our
authority under 37 C.F.R. § 41.37(c)(l)(iv). Claims 39-53 and 58---61 stand
or fall with claim 38.
5 We note Appellants do not substantively address the Examiner's taking of
Official Notice. (App. Br. 8)
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discussed further below, we are not persuaded the Examiner has erred in
finding the combination including Ananda and Lawlor teaches or suggests
the limitations of claim 3 8.
Appellants present four arguments on appeal. Appellants first argue
the Examiner's findings are in error because Lawlor "actively disparages
[personal computers]." (App. Br. 4; see also Reply Br. 2.) Because the
Examiner relies on Ananda, not Lawlor, to teach the element of a personal
computer ("PC") (Final Act. 6-7), we interpret Appellants' argument as
stating Lawlor teaches away from the Examiner's proposed combination of
Lawlor with Ananda. We disagree. As the Examiner finds, and we agree:
Lawlor describes a banking scenario on a small device, which is
more convenient to an average user, but he does not attack the
use of "a content server date/time which agrees with a reset
date/time stamp of a client computer for generating identical
pseudo random numbers" in a more powerful device such as a
PC.
(Ans. 5.) Appellants; on the other hand; do not point to any teaching in
Lawlor that states Lawlor's teachings of secure online banking using
pseudo-random number encryption between a user terminal and a central
computer, as cited by the Examiner, would not operate in a PC environment
as described by Ananda. (See Final Act. 7 (citing Lawlor 26:45-55).)
Rather, the portions of Lawlor cited by Appellants (see Reply Br. 2) explain
that some potential users might prefer the "dedicated telephone-based
banking terminals" described therein as a "low cost" and/or simpler solution
to PCs. (Lawlor 6:59-61; 6:32-58; see also Lawlor 6:25-37, 14:41--44.)
Merely describing one solution as preferred over another does not, however,
amount to disparagement or teaching away. As our reviewing court has
explained, "' [a] reference may be said to teach away when a person of
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ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant."' Ricoh Co., Ltd. v.
Quanta Computer, Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations
omitted). On the other hand, a reference does not teach away if it merely
expresses a general preference for an alternative invention from amongst
options available to the ordinarily skilled artisan, and the reference does not
discredit or discourage investigation into the invention claimed. In re
Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004).
Appellants' additional arguments, which each posit that combining
Lawlor with Ananda would result in an inferior and/or unworkable system,
are no more persuasive of Examiner error. (See App. Br. 6-8; Reply Br. 2-
3.) Each of these arguments relies at least in part on the premise that the
Ananda and Lawlor references cannot be physically combined. (App. Br. 4--
8.) These arguments are unpersuasive because they fail to apply the proper
standard. "[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review." In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (citing Orthopedic Equip. Co.,
Inc. v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983); In re Andersen,
391 F.2d 953, 958 (CCPA 1968)); see also In re Nievelt, 482 F.2d 965, 968
(CCPA 1973) ("Combining the teachings of references does not involve an
ability to combine their specific structures."). "The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference . . . . Rather, the test
is what the combined teachings of the references would have suggested to
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those of ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA
1981) (citations omitted).
Although Appellants have submitted articles purporting to describe
aspects of clock synchronization (App. Br., Exhibits A-E) to support their
argument the modification of Ananda with Lawlor would be inferior to
Ananda alone (App. Br. 6-8), such evidence does not render Appellants'
arguments any more persuasive because the fundamental premise of
Appellants' arguments remains flawed. As our reviewing court has
explained, the law "does not require that a particular combination must be
the preferred, or the most desirable, combination described in the prior art in
order to provide [the] motivation [or reason] for the current invention." See,
e.g., Fulton, 391 F.3d at 1200; In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994) ("A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to some other
product for the same use.").
We further note the artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984). Rather, as the Supreme Court has explained, the
skilled artisan would "be able to fit the teachings of multiple patents together
like pieces of a puzzle" because the skilled artisan is "a person of ordinary
creativity, not an automaton." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
420-21 (2007). Here, Appellants have not persuasively demonstrated the
Examiner's proffered combination would have been "uniquely challenging
or difficult for one of ordinary skill in the art." Leapfrog Enters., Inc. v.
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Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418).
For the foregoing reasons, we are not persuaded the Examiner erred in
finding the combination including Ananda and Lawlor teaches or suggests
the limitations of claim 38. We, therefore, sustain the Examiner's 35 U.S.C.
§ 103(a) rejection of claim 38, and also claims 39-53 and 58-61, which are
not separately argued.
DECISION
For the above reasons, the Examiner's rejections of claims 38-53 and
5 8---61 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
8