Ex Parte Ge et al

Patent Trial and Appeal Board

Mar 25, 2015

11427098 (P.T.A.B. Mar. 25, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/427,098 06/28/2006 Li Ge AUS920060355US1 1955
7590 03/25/2015
J. B. Kraft
710 Colorado Street #5C
Austin, TX 78701
EXAMINER
ZELASKIEWICZ, CHRYSTINA E
ART UNIT PAPER NUMBER
3621
MAIL DATE DELIVERY MODE
03/25/2015 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LI GE, HUI JIANG, YU TANG, and PING WANG
____________________

Appeal 2012-009576
Application 11/427,098
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION
1
ON APPEAL

STATEMENT OF THE CASE
Appellants
2
appeal under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–3, 5–7, 22–24, 26–31, and 33–35. We have
jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.

1
Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
Mar. 21, 2012), Reply Brief (“Reply Br.,” filed June 11, 2012), and
Specification (“Spec.,” filed June 28, 2006), and the Examiner’s Answer
(“Ans.,” mailed Apr. 11, 2012).
2
Appellants identify the real party in interest as International Business
Machines Corporation (App. Br. 2).
Appeal 2012-009576
Application 11/427,098

2

INVENTION
The claimed invention relates to accessing of digital files from
databases (Spec. 1). Claim 1 reproduced below (lettering in brackets added),
is illustrative of the subject matter on appeal.
1. A user interactive computer controlled display method for
interactively accessing digital files from a database comprising:

[a] a computer determining a first set of data entry protocols for
enabling a user to interactively access a portion of an initial digital file
comprising an audio musical presentation wherein said portion is a
unit of said musical presentation;

[b] said computer enabling the user to interactively access said
portion by entering said first set of protocols;

[c] said computer determining a second set of data entry protocols
for enabling a user to interactively access another digital file
comprising said audio musical presentation as a whole from a
database, including a protocol requiring said user to interactively
access a predetermined number of portions of said initial digital file;
and

[d] said computer enabling a user to interactively access said
another digital file, in response to said user interactively accessing
said predetermined number of portions, by entering said second set of
data entry protocols.

REJECTIONS
The following rejections are before us for review.
Claims 1–3, 5–7, 22–24, 26–31, and 33–35 are rejected under 35
U.S.C. § 102(b) as being anticipated by Liebenow (US 2005/0021414 A1,
pub. Jan. 27, 2005).
Appeal 2012-009576
Application 11/427,098

3

Claims 1–3, 5–7, 22–24, 26–31, and 33–35 are rejected under 35
U.S.C. § 103(a) over Liebenow and Heaven (US 2004/0015445 A1, pub.
Jan. 22, 2004).
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.
3

ANALYSIS
Anticipation
Appellants request review of the rejection of claims 1–3, 5–7, 22–24,
26–31, and 33–35 under 35 U.S.C. § 102(b) as a group, arguing that claim 1
is not anticipated by Liebenow (App. Br. 12–13, Reply Br. 2). Thus, we
select claim 1 as being representative. Therefore, the remaining claims stand
or fall with claim 1. 37 C.F.R. § 41.37 (c)(1)(vii)(2011).
Appellants acknowledge that the prior art discloses limitations [a] and
[b] of claim 1, however, argue that limitations [c] and [d] are not disclosed
by Liebenow (App. Br. 9, 12).
The Examiner, instead, maintains that limitations [c] and [d] of claim
1 are disclosed by Liebenow (Ans. 10–13).
Liebenow attempts to solve a problem wherein users who’d like to
purchase a song or a set of songs are often required to pay for a complete
copy of the title or titles without previewing them, thus making an
uninformed purchasing decision (Liebenow ¶ 6). Liebenow’s music
distribution system obligates a user to pay a first fee to preview content, and

3
See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 11/427,098

4

then, the opportunity to make an informed decision to purchase a license to
the content in full by paying a greater second fee (id. at ¶¶ 26–27).
The Examiner finds that the limitation reciting “a second set of data
entry protocols for enabling a user to interactively access another digital file
comprising said audio musical presentation as a whole from a database”
corresponds to Liebenow’s disclosure of providing payment information
through an input device and processing the payment of a second fee to
receive authorization and access to content in full (Ans. 12, citing Liebenow
¶¶ 26–32, 36). Furthermore, the Examiner finds that by obligating a user to
preview content prior to being offered the opportunity to purchase a license
for the content, Liebenow discloses “a protocol requiring said user to access
a predetermined number of portions of said initial digital file,” as called for
in claim 1 (id. at 12–13). In other words, by requiring the user to pay a first
fee to preview content prior to being provided with the opportunity to pay a
second greater fee to purchase the license to the content in full, the prior art
necessarily requires the user to access at least one portion of said initial
digital file (preview)–––the predetermined number of portions thus may be a
preview of at least one song. We further note that the Specification
discloses
…the first set of data entry protocols to include provision for
the setting of a small fee accepted by the user for each accessed
file portion, and for the provision in the second set of protocols
for a larger fee accepted by the user for the access of the entire
digital file, step 75.

Accordingly, these protocols could include an acceptance of the
condition that sets a specified predetermined number of
portions of the digital file that must be accessed before the user
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is given the option of accessing the entire digital file through
the entry of the second set of protocols
(Spec. 13–14).
Consistent with the Specification, Liebenow discloses paying a greater second
fee to access the desired content in full after initially paying a smaller fee to
preview a portion of the content. Accordingly, we are not persuaded of
reversible error by the Examiner. Therefore, the rejection of claim 1 under 35
U.S.C. § 102(b) is sustained; the remaining claims thus fall with claim 1.

Obviousness
As noted above, Liebenow does teach all the limitations of claim 1. A
disclosure that anticipates under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103, for “anticipation is the epitome of
obviousness.” Jones v. Hardy, 727 F.2d 1524, 1529, (Fed. Cir. 1984). See
also In re Fracalossi, 681 F.2d 792, 794, (CCPA 1982); In re Pearson, 494
F.2d 1399, 1402, (CCPA 1974). Therefore, we sustain the Examiner’s
rejection of independent claims 1, 22, and 29 under 35 U.S.C. § 103(a). For the
same reasons, we also sustain the rejection of dependent claims 2, 3, 5–7, 23,
24, 26–28, 30, 31, and 33–35. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir.
1992) (“dependent claims are nonobvious if the independent claims from which
they depend are nonobvious”).
DECISION
The rejections of claims 1–3, 5–7, 22–24, 26–31, and 33–35 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED