Ex Parte Davis et al

Board of Patent Appeals and Interferences

Mar 24, 2010

10621275 (B.P.A.I. Mar. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WILLIAM NELSON DAVIS and STEVEN JOHN KUHLMAN
____________________

Appeal 2009-009743
Application 10/621,2751
Technology Center 2100
____________________

Decided: March 24, 2010
____________________

Before LANCE LEONARD BARRY, JAY P. LUCAS, and CAROLYN D.
THOMAS, Administrative Patent Judges.

LUCAS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal from a final rejection of claims 1 to 6, 10, 11, 13,
14, and 17 to 21 under authority of 35 U.S.C. § 134(a). The Board of Patent

1 Application filed July 17, 2003. Appellants claim the benefit under
35 U.S.C. § 119 of provisional application 60/452,576, filed 3/6/03. The
real party in interest is Monotype Imaging, Inc.
Appeal 2009-009743
Application 10/621,275
Appeals and Interferences (BPAI) has jurisdiction under 35 U.S.C. § 6(b).
An Oral hearing was held on March 16, 2010.

We affirm the rejections.

Appellants’ invention relates to a system and method for renting type
fonts. In the words of Appellants:
A font rental system provides a system for
the licensing of font software, using a rental
model. This differs from the conventional
techniques for distributing fonts, which requires
their purchase and permanent installation onto a
computer. The font is delivered to the end user or
font consumer. It provides for the ability to control
the degree to which the end users can access the
font and how long it is available to them. As a
result, the cost can be reasonable and the user is
not forced to license more than they require.
(Spec. 15).

Claim 1 is exemplary and is reproduced below:
1. A method for the distribution of fonts by
rental, the method comprising:

a font consumer requesting a font from a
font provider;

the font provider accessing subscription
information for the font consumer;

the font provider sending the requested font
to the font consumer depending on the subscription
information, the font provider giving lifetime
information with the requested font, the lifetime
information defining a predetermined period of
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time for which the font consumer is authorized to
use the requested font and defining a
predetermined access for use based on the
subscription information; and

the font consumer receiving the requested
font and providing the requested font to an
application by installing the requested font in the
font consumer for the predetermined period of
time and for the predetermined access, wherein the
required font is tracked so that upon expiration of
said predetermined period of time, the font is
disabled.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Barron US 2001/0042124 A1 Nov. 15, 2001
Nagy US 2003/0119478 A1 Jun. 26, 2003
Ying US 6,853, 980 B1 Feb. 08, 2005
Hayes US 6,882, 344 B1 Apr. 19, 2005

REJECTIONS
The Examiner rejects the claims as follows:

R1: Claims 1 to 3, 6, 10, and 18 to 20 stand rejected under 35
U.S.C. § 103(a) for being obvious over Ying in view of Hayes.
R2: Claim 4 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Ying in view of Hayes and further in view of Nagy.
R3: Claims 5 and 21 stand rejected under 35 U.S.C. § 103(a) for being
obvious over Ying in view of Hayes and further in view of Barron.
R4: Claims 11, 13 and 17 stand rejected under 35 U.S.C. § 103(a) for
being obvious over Ying and Hayes.
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R5: Claim 14 stands rejected under 35 U.S.C. § 103(a) for being obvious
over Ying and Hayes and further in view of Barron.

Appellants contend that the claimed subject matter is not rendered
obvious by Ying and Hayes alone, or in combination with Nagy or Barron,
for failure of the references to teach a key limitation. The Examiner
contends that each of the claims is properly rejected.
In view of the arguments, the rejections will be reviewed together.
The claims are grouped as per Appellant’s Briefs. Only those arguments
actually made by Appellants have been considered in this opinion.
Arguments that Appellants could have made but chose not to make in the
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(1)(vii).

ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 103(a). The issue specifically turns
on whether the references teach a method or system for distributing or
managing fonts by rental, with the features expressed in the claims.

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants have invented a system and method for distributing fonts to
consumers through what is disclosed to be electronic distribution means
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and steps (Spec. 8, bottom). In accordance with a rental model, the
provider rents the font to the user for a set period of time (Spec. 9,
bottom). A font tracker uninstalls or otherwise disables the font at the end
of the timer period set by the lifetime information from the provider (Id.).
2. Ying teaches a method of selling fonts to consumers through e-commerce
(Col. 2, l. 60). Fonts can be tested before purchase to see if they conform
to the user’s expectations (Col. 4, l. 57). Licenses control the use of the
font by the consumer, which licenses include limitations on the right to
use, including “on the length of time for which they can be used.” (Col.
30, ll. 29, 30).
3. Hayes also teaches a method for distributing fonts, including replacing
electronic font files that have become corrupted (Col. 3, ll. 28 to 38).
Included is a mechanism for sending available fonts to a consumer to
allow the consumer to sample a font. At the end of the sampling period,
if the font is not purchased it is disabled (Col. 8, l. 47).

PRINCIPLES OF LAW

Appellants have the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
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indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

“In reviewing the [E]xaminer’s decision on appeal, the Board must
necessarily weigh all of the evidence and argument.” In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).

“A reference does not fail as an anticipation merely because it does
not contain a description of the subject matter of the appealed claim in
ipsissimis verbis.” In re May, 574 F.2d 1082, 1090 (CCPA 1978) (citing In
re Schaumann, 572 F.2d 312, 317 (CCPA 1978).

ANALYSIS
From our review of the administrative record, we find that the
Examiner presents his evidence for the rejections on pages 3 to 13 of the
Examiner’s Answer. In opposition, Appellants present a number of
arguments, all of which are applicable to all of the rejections (App. Br. 9 to
13). We will thus consider the rejections [R1 to R5] together.

Arguments with respect to the rejection
of claims 1 to 6, 10, 11, 13, 14 and 17 to 21
under 35 U.S.C. § 103(a) [R1-R5]

Appellants first argue that the Examiner has equated the claimed
renting of fonts with the disclosure in the references of borrowing, lending
and selling of fonts (App. Br. 9, top). A rejection is not an ippismus verbis
process, and if the references teach all of the claimed steps or elements, we
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will not quibble about the verb. (See In re May, cited above, albeit in an
anticipation context.) Our inquiry will focus on whether the references teach
the claimed limitations.
Appellants contend that Ying “provides no description as to how to
provide or implement or enforce a license or sale including limitations.”
(App. Br. 9, bottom). The Examiner has expressed how Ying does teach
restrictive licenses being included with the sale of fonts (Ans. 11, bottom).
These restrictions include the “length of time for which they could be used.”
(Col. 30, ll. 29, 30). For a teaching of enforcement of the license, the
Examiner has used a teaching in the Hayes reference: “In this instance, a
font for sale may be sent with timeout information, thus allowing a user to
sample the font for a period of time and when the time expires disabling the
font.” (Ans. 11, middle; col. 8, ll. 46 to 48). The disabling is done by a font
manager application #706 pursuant to the timeout information
accompanying the font (Col. 7, l. 21). The combination of teachings, we
find, render obvious the subject claim limitation.
At the oral hearing on March 16, 2010, the Appellants argued that the
Hayes’ teaching referred to distributing non-activated fonts, pointing to
column 10, line 40, of Hayes. We find that Hayes does have that teaching,
however as an alternative to the teaching cited by the Examiner and
described just above. The Examiner properly relied upon the column 8
teaching.
As all of the rejections are argued by Appellants using logic similar to
the above, we are not persuaded that the Examiner erred in rejections [R1 to
R5].
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CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we conclude that
the Examiner did not err in rejecting claims 1 to 6, 10, 11, 13, 14 and 17 to
21.
DECISION
The Examiner’s rejections [R1 to R5] of claims 1 to 6, 10, 11, 13, 14
and 17 to 21 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)(1)(iv).

AFFIRMED

peb

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