Ex Parte GudorfDownload PDFBoard of Patent Appeals and InterferencesFeb 3, 201109785094 (B.P.A.I. Feb. 3, 2011) Copy Citation 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. 09/785,094 02/16/2001 Gregory D. Gudorf SONY 3.0-014 5522 530 7590 02/03/2011 LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK 600 SOUTH AVENUE WEST WESTFIELD, NJ 07090 EXAMINER EL CHANTI, HUSSEIN A ART UNIT PAPER NUMBER 2441 MAIL DATE DELIVERY MODE 02/03/2011 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 GREGORY D. GUDORF ____________________ Appeal 2010-0014971 Application 09/785,094 Technology Center 2400 ____________________ Before JOSEPH L. DIXON, LANCE LEONARD BARRY, and JEAN R. HOMERE, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL2 1 Effectively filed May 12, 2000. The real party in interest is Sony Corp. (App. Br. 1.) An oral hearing was held in this appeal on February 1, 2011. 2 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-001497 Application 09/785,094 2 I. STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) (2002) from the Examiner’s final rejection of claims 1-15 and 17-55. Claim 16 has been canceled. (App. Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b) (2008). We reverse. Appellant’s Invention Appellant invented a method and system for allowing authenticated users to store audio files at a central location in such a way that each user can only download those files uniquely associated with the user’s authentication information. (Spec. 2-3 ¶¶ [0008-0009].) Illustrative Claims Independent claims 1 and 52 further illustrate the invention. They read as follows: 1. A method of storing audio files comprises: (a) receiving at a central location electronic files representing audio signals from a first device, (b) associating the audio files with authentication identification information of a user, (c) storing said audio files at said central location on at least a portion of a storage media, said portion uniquely associated with said authentication identification information, (d) receiving at said central location said authentication identification information from a second device, (e) transmitting said audio files to said second device upon receipt of said authentication identification information. Appeal 2010-001497 Application 09/785,094 3 52. A method for storing audio files for use by multiple users to prevent access to an authorized user's audio files by other authorized users comprising: (a) receiving at a central system a plurality of electronic files representing audio signals for the purpose of storing the plurality of files at the central system for multiple users, (b) storing a plurality of sets of electronic files of the plurality of audio files at the central system, each set being uniquely associated with authentication identification information of a user, (c) receiving at said central location authentication identification information of a user from a device, and (d) transmitting audio files of a set of audio files to said device upon receipt of said authentication identification information of the user; wherein different stored sets of electronic files of the plurality of audio files on the central system are exclusively accessible to different authentication identification information, wherein the central location is configured to permit concurrent submission of the authentication identification information of the user and audio file identification information from the device for transmitting at least one of the audio files to the device, without first transmitting a song selection list to the device. Prior Art Relied Upon The Examiner relies on the following prior art as evidence of unpatentability: Van Zoest US 6,609,105 B2 Aug. 19, 2003 Appeal 2010-001497 Application 09/785,094 4 Rejections on Appeal The Examiner rejects the claims on appeal as follows: 1. Claims 52-54 stand rejected under 35 U.S.C. § 112, 1st paragraph as failing to comply with the written description requirement. 2. Claims 1-4, 6-10, 12-15, and 17-55 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Van Zoest. 3. Claims 5 and 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Van Zoest. Appellant’s Contentions 1. Appellant contends that claims 52-54 comply with the written description requirement. In particular, Appellant argues that the originally filed disclosure supports the limitation of exclusively accessing different stored audio files using authentication information associated therewith. (App. Br. 8-10.) Similarly, Appellant argues that the Specification also supports the limitation of the central location being configured to permit a user to concurrently submit authentication information along with the audio file identification information without first transmitting a song selection list to the user’s device. (Id. at 11, Reply Br. 4-5.) Consequently, Appellant submits that while the Specification does not contain the exact claim language, one of ordinary skill in the art would reasonably discern therefrom that at the time of the invention Appellant had possession of the claim subject matter. (App. Br. 8.) Appeal 2010-001497 Application 09/785,094 5 2. Appellant contends that the submitted documentary evidence and testimonial evidence of prior conception properly disqualify Van Zoest as a prior art reference. (App. Br. 12-16, Reply Br. 5-9.) According to Appellant, the Examiner fails to evaluate the proffered evidence to determine whether, prior to the effective filing date of Van Zoest of January 7, 2000, Appellant had invented downloading audio files previously uploaded onto a storage media portion residing at a central location wherein the storage portion is uniquely identified by user authentication information associated therewith. (Id.) 3. Appellant contends that Van Zoest does not teach a central location being configured to permit a user to concurrently submit authentication information along with the audio file identification information without first transmitting a song selection list to the user’s device, as recited in independent claim 52. (App. Br. 17-18.) According to Appellant, Van Zoest discloses requiring a user to log onto an audio file system before the user can subsequently select from a song selection list access to a desired song stored at a central location. Therefore, Appellant submits that Van Zoest requires transmitting a song selection list to the user’s device before the user can select a song, as opposed to allowing the user to request a song without having to select it from a song list. (App. Br. 17, Reply Br. 11-12.) Appeal 2010-001497 Application 09/785,094 6 Examiner’s Findings and Conclusions 1. The Examiner finds that while Appellant’s Specification discusses the submission of user authentication information as well as the identification of audio file information to a central location, it is devoid of any support for submitting these two types of information to the central location in a concurrent manner, as recited in claim 52. (Ans. 15). 2. The Examiner finds that the submitted documentary and testimonial evidence is insufficient to show that, prior to the effective filing date of Van Zoest of January 7, 2000, Appellant had possession of the concept of downloading audio files previously uploaded onto a storage media portion residing at a central location wherein the storage portion is uniquely identified by a user authentication information associated therewith, as recited in claim 1. (Ans. 15-17.) 3. The Examiner finds that Van Zoest’s disclosure of a server sending a requested audio file to a user upon validating the user identification information teaches concurrently submitting the user identification information along with audio information, as recited in claim 52. (Ans. 17.) II. ISSUES 1. Has Appellant shown the Examiner erred in finding that the originally-filed disclosure does not support the limitations of (1) a plurality of audio files exclusively accessible via different user authentication information associated therewith, and (2) concurrently submitting user Appeal 2010-001497 Application 09/785,094 7 authentication information as well as the audio file identification information to a central location without first transmitting a song selection list to the user’s device, as recited in claim 52? 2. Has Appellant shown the Examiner erred in finding the documentary evidence and the testimonial evidence do not sufficiently show that, prior to the effective filing date of Van Zoest of January 7, 2000, Appellant had possession of the concept of downloading audio files previously uploaded onto a storage medium portion residing at a central location wherein the storage portion is uniquely identified by a user authentication information associated therewith, as recited in claim 1? 3. Has Appellant shown the Examiner erred in finding that Van Zoest teaches a central location configured to permit a user to concurrently submit authentication information along with the audio file identification information without first transmitting a song selection list to the user’s device, as recited in independent claim 52? III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Appellant’s Specification Appellant’s Specification states the following: 1. User storage area 110 is used to store the user music files 114 uploaded by the users. Preferably, each user has a predefined amount of space allocated to its sole use, and no other user is permitted unauthorized access to any information Appeal 2010-001497 Application 09/785,094 8 stored in its particular space. Each user has a User ID 112 which identifies the space allocated to the user. Specification ¶ [0023].) Emphasis added. 2. The operation of downloading the music is also shown in FIG. 4. In this embodiment, the user accesses the content server 70 (such as by logging onto a web page) via PDA 73 which, for the purposes of this example, shall be considered to be at a geographic location remote from end user computer 60 (step 220). In other words, although the user uploaded the songs with one device, the user may download the songs at a different location with a different device. The user accesses the web site maintained by content server 70 by using wireless modem 76 in a manner well known to those of ordinary skill in the art. The user next supplies its User ID to content server 70 by entering the information on a web page displayed on screen 75 (step 222). For example, the user may identify itself as "User1" (it is recommended, but not required, that user names be more arbitrary than a designation of "User1" for security reasons). Optionally, the song may be identified at the same time as well. Processor 101 of server 70 searches user storage area 110 to see whether there is any user associated with that particular ID (steps 224 and 226). If the user ID is not found, an error notification is sent to the user to that effect (step 211). (Specification ¶¶ [0027-0028].) Emphasis added. 3. Accordingly, each user is assigned a unique identification code such that the user (or the entity to whom the user gives the code) is the only entity that can upload and download music to and from the storage space allocated to the user. This identification code is sent with, or before, the steps of uploading and downloading and is used to verify that the Appeal 2010-001497 Application 09/785,094 9 requester is the user associated with the particular storage space. It is not necessary for the server to set aside, in advance, actual portions of the storage space to particular users. Rather, the files may be first stored (and thus occupy a portion of the hard drive of the server) and access permissions set for the file set in accordance with the identify [sic] of the user. Specification ¶ [0031].) Emphasis added. Appellant’s Drawing 4. Appellant discloses a flowchart indicating that upon a user transmitting authentication information (user ID) along with a valid song (song ID) (222), the requested song can be located and transmitted to the user’s device (236) without prompting a songlist (230) to the user for selecting a song (232). (Fig. 4.) Evidence Appendix 5. Appellant attests that, prior to January 7, 2000, he conceived the invention as described in attachment Exhibit A (invention disclosure form). (Exhibit B1, ¶ 3.) 6. The invention disclosure form, entitled “your music.. Anywhere” describes that a better approach for allowing a user of a substantial CD collection to access their music anywhere is to upload all the music from the CD to a secure server in such a way to remotely access it from any device connected to the Internet in a wired or wireless method via streaming or download options. In particular, the secure server checks for Appeal 2010-001497 Application 09/785,094 10 security limitations during the music upload phase, and securely delivers the requested music during the streaming or download phase. (Exhibit A, 1-8.) 7. Mr. Beckwitt attests to have worked with Appellant in 1999, and to have discussed with Appellant the invention described in Exhibit A. In particular, Mr. Beckwitt declares under oath that he discussed with Appellant that the disclosed system allows users to use their security information (username and password) to uniquely access individual audio files that they previously uploaded to the server thereby associating audio files with the user security information. (Exhibit B4, ¶ 7.) 8. Mr. Beckwitt further attests under the penalty of perjury that he discussed with Appellant that the secure server is able to store user’s uploaded music on storage media portions at the central server wherein said portions are uniquely associated with the user’s security information. (Id. at 8.) 9. Additionally, Mr. Beckwitt attests under the penalty of perjury that he discussed with Appellant that, upon receiving and authenticating the user security information, the secure server is able to forward a requested music file to the user’s device associated with the user’s security information. (Id. at 8.) 10. Appellant confirms having conceived prior to January 7, 2000, the claim features detailed in findings 7-9 above. Appellant further attests that such findings are encompassed by and were intended to be included in the invention disclosure document. (Exhibit B5, ¶¶ 7-9.) Appeal 2010-001497 Application 09/785,094 11 Van Zoest 11. Van Zoest discloses a method and system for allowing authenticated users to upload audio data from their CD to a central storage location, and to subsequently download previously uploaded audio data from any terminal connected to the Internet. (Abstract.) 12. In particular, Van Zoest discloses assigning a unique online locker to each authenticated user, and associating the user authentication information with an online locker reserved to upload audio data thereto and download said data therefrom. (Col. 1, ll. 33-50.) 13. Van Zoest discloses that a server provides a user with a session identifier after the user has logged into his/her account at a selected website. Then, the server validates the user’s access by comparing the user’s issued session identifier with another identifier stored within a URL for a request that the user selected from the website. Subsequently, the server streams the requested work to the user’s device if the work is available. (Col. 20, l. 31- col. 21, l. 3.) IV. ANALYSIS Written Description Rejection Claims 52-54 recite in relevant-parts (1) a plurality of audio files exclusively accessible via different user authentication information associated therewith, and (2) concurrently submitting user authentication information as well as the audio file identification information to a central location without first transmitting a song selection list to the user’s device. (Br. 21, App’x.) We address representative independent claim 52. Appeal 2010-001497 Application 09/785,094 12 Appellant’s Specification indicates that the authentication information of each user is uniquely allocated to a predefined amount of space, which other users cannot readily access. (FF. 1.) We agree with Appellant that the cited portion of the Specification amply supports the claim limitation of allowing a user to exclusively access audio files via authentication information uniquely associated therewith. Similarly, we agree with Appellant that the disclosure that authentication information can be optionally transmitted with or at the same time as an identified song selection (FF. 2, 3.) does support the limitation of concurrently submitting the authentication information along with the song identification information. Additionally, we find that Appellant’s disclosure supports that the transmission of the audio file identification information can take place without having to first provide a song list to the user’s device so long as the input song list is valid. (FF. 4.) Consequently, we find that Appellant’s originally-filed Specification and Drawings support the disputed claim limitations set forth above. Appellant has therefore shown error in the Examiner’s finding that claims 52-54 fail to comply with the written description requirement. Prior Art Rejections Claims 1-15 and 17-52 We find error in the Examiner’s finding that Appellant’s documentary evidence and testimonial evidence are insufficient to show that Appellant had possession of the claimed invention prior to January 7, 2000. In particular, we do not agree with the Examiner that Mr. Beckwitt’s Appeal 2010-001497 Application 09/785,094 13 declaration is speculative. We find it rather persuasive since it corroborates Appellant’s declaration as to how the secure server detailed in Attachment A is supposed to function. We thus find credible Appellant’s testimony, as corroborated by Mr. Beckwitt’s declaration that before the effective filing date (January 07, 2000) of the Van Zoest reference, Appellant conceived the secure server to associate user authentication information with specific storage portions to thereby enable the user to uniquely upload audio information thereto, as well as to download uploaded audio information therefrom. (FF. 5-10.) Therefore, we find that the weight of the evidence before us favors Appellant’s position that the claimed invention predates the Van Zoest reference. It follows that Appellant has shown error in the Examiner’s rejections of claims 1-15 and 17-52 as being anticipated by or unpatentable over Van Zoest since Appellant has effectively disqualified Van Zoest as prior art for these claims. Claims 52-54 Appellant does not present evidence to disqualify Van Zoest as prior art for these claims. Therefore, we consider the merits of the rejection. We find error in the Examiner’s rejection of claims 52-54 as being unpatentable over Van Zoest. In particular, we agree with Appellant that Van Zoest discloses that, after authenticating a user at a website, presenting the user with a song selection list from which the user selects an audio file for subsequent streaming. The server then locates the requested file, and to subsequently streams it to the user if it is available. (FF. 13.) We find that Appeal 2010-001497 Application 09/785,094 14 Van Zoest’s disclosure at best teaches submitting the authentication information and the song identification information in a sequential order, as opposed to “concurrently” as required by claim 52. Further, we find that Van Zoest’s disclosure of selecting the song from a song list for submission clearly violates the requirement of claim 52. Consequently, we find that Van Zoest’s disclosure does not teach or suggest concurrently transmitting the user’s authentication information along with a song request, which is not first selected from a song list. It follows that Appellants has shown error in the Examiner’s rejection of those claims. V. SUMMARY Appellant has established that the Examiner erred in rejecting claims 1-15 and 17-55. We therefore reverse the Examiner’s rejections. REVERSED Vsh LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK 600 SOUTH AVENUE WEST WESTFIELD NJ 07090 Copy with citationCopy as parenthetical citation