Ex Parte Hunter et al

Board of Patent Appeals and Interferences

Aug 25, 2009

09707273 (B.P.A.I. Aug. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHARLES ERIC HUNTER,
BERNARD L. BALOU, JR., KELLY C. SPARKS,
and JOHN H. HEBRANK
____________

Appeal 2008-4518
Application 09/707,273
Technology Center 3600
____________

Decided: August 25, 2009
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appeal 2008-4518
Application 09/707,273

STATEMENT OF THE CASE1
The Appellants have filed a Request for Rehearing, under 37 C.F.R. §
41.52, of the Decision by the Board affirming the rejection of claims 40-42,
48, 50, 52-54, 60, 62, and 64-71 under 35 U.S.C. §102(b) as being
anticipated by Schulhof; claims 49, 51, 61, 63, and 72 under 35 U.S.C. §
103(a) as being unpatentable over Schulhof; and, claims 43-47 and 55-59
under 35 U.S.C. §103(a) as being unpatentable over Schulhof and McMillen.
In accordance with 37 C.F.R. § 41.52(a)(1), the Request indicates
certain points in particular that the Appellants believe the Board
misapprehended or overlooked in reaching its decision. The Request
challenges the Board’s construction of claims 40 and 43 and the decision to
affirm the rejection of these claims under §102 and 103, respectively, based
on that construction.
It should be noted that the Request focuses solely on claims 40 and
43. However, the limitations in claims 40 and 43, whose construction is at
issue, also appear in apparatus claims 64-72. Yet, the affirmance of the
rejections of those claims is not being challenged. Furthermore, while the
Appellants challenge the Board’s affirmance of the §102 rejection of claim
40, via a dispute over the Board’s construction of that claim, there is no
challenge to the rejection of claims 49, 51, 61, and 63 that depend on claim
40, but which were rejected under §103. There is, therefore, an

1 Our decision will make reference to the Appellants’ Request for Rehearing
(“Request,” filed Apr. 17, 2009) and the Board of Patent Appeals and
Interferences’ Decision (“Decision,” mailed Feb. 19, 2009), and the
Appellants’ Specification (“Spec.,” filed Nov.6, 2000).

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inconsistency in the Appellants’ position toward the Board’s decision to
affirm the rejections of the claims on appeal.
We have reviewed the Request for Rehearing in its entirety but do not
find reason to change the decision to affirm the rejections of the claims. We
will, however, modify our analysis and, as a result of doing so, denominate
their affirmance as new grounds of rejection, under 37 C.F.R. § 41.50(b).

DISCUSSION
Claim 40
The issue is whether Schulhof describes the limitation “said charging
triggered upon the consumer recording the music selection.”
The Appeal Brief argued that Schulhof
is silent on how and when the consumer is charged
or billed for these orders [i.e., the selected audio
program material]. In fact, Schulhof, at al. teaches
or suggests that the consumer is charged at the
time of ordering, as opposed to "upon the
consumer recording the music selection on a
storage medium located at a consumer site,"
according to claim 40.
Br. 6 (See Decision 10). Accordingly, there has never been any dispute that
Schulhoff described “charging” at the time of ordering. That Schulhof
describes authorizing billing to a credit card or other account at the time of
ordering an audio program was a fact that was not in dispute. See Decision
5; FF 7. We accepted that Schulhof’s authorizing the billing of a credit card
was not the same as asking for payment, as the term “charging” was
reasonably broadly construed, but we found that “charging” the credit card -
which is an asking for payment - necessarily flowed from and would be an
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automatic result of the authorization to bill the credit card. Decision 9. The
Board found therefrom that Schulhof necessarily described automatically
charging a credit card triggered by ordering an audio program. Decision 9-
10. We see nothing in the Request that disputes this finding.
The only question is whether Schulhof further describes automatically
charging the credit card triggered upon recording the audio program. We
have reviewed the Decision’s answer to this question and find that the logic
used in the Decision’s analysis in concluding that Schulhof describes
automatically charging the credit card triggered upon recording the audio
program could have been strengthened.
In addressing the question of whether Schulhof describes
automatically charging the credit card triggered upon recording the audio
program, the Decision does not appear to clearly address when Schulhof
begins the recording of the audio program in relation to the ordering of the
audio program. There is no dispute that Schulhof describes an operation
whereby a subscriber selects a desired audio program material for recording
onto a portable device. Decision 5, FF 7. What the Decision does not
clearly explain is when a subscriber practicing the Schulhof process would
begin recording the selected desired audio program. Without that piece of
information, it was an unreasonable leap to conclude, as the Decision did,
that Schulhof inherently describes automatically charging a credit card
triggered, not just upon ordering an audio program, but upon recording of
the audio program as well.
We should have emphasized, as we do here, that Schulhof discloses
“immediately” transferring the desired audio program to the portable device
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after it is selected and ordered. See Decision 5, FF 7. One of ordinary skill
in the art reading Schulhof would understand Schulhof to be describing an
operation whereby the selected desired audio programs are “immediately”
recorded upon ordering. The ordinary and customary meaning of
“immediately” is “without delay; at once; instantly”. (See Webster’s New
World Dictionary 674 (3rd Ed. 1988.)(Entry 2. for “immediately.”)
Since there is no dispute that Schulhof describes automatically charging a
credit card triggered upon ordering an audio program and given that
Schulhof describes the instant recording of the selected desired audio
program upon ordering, it logically follows that Schulhof necessarily
describes “automatically charging a consumer for a music selection made by
the consumer, said charging triggered upon the consumer recording the
music selection on a storage medium located at a consumer site” as claimed.
This modification to the Decision’s analysis is significantly different
from the rationale the Examiner used to reject claim 40 under §102 over
Schulhof. Accordingly, though we will maintain the affirmance of the
rejection of claim 40, we will denominate it as a new grounds of rejection
under 37 C.F.R. § 41.50(b). Although the Appellants have been inconsistent
in challenging the rejection of claim 40 but not the other claims, because the
limitation at issue appears in all the claims and the analysis of Schulhof
affects the grounds of rejections for all the claims, in the interest of
adjudicatory consistency, we will maintain the decision to affirm the
rejections of claims 41, 42, 48, 50, 52-54, 60, 62, and 64-71 under 35 U.S.C.
§102(b) as being anticipated by Schulhof; claims 49, 51, 61, 63, and 72
under 35 U.S.C. § 103(a) as being unpatentable over Schulhof; and, claims
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43-47 and 55-59 under 35 U.S.C. §103(a) as being unpatentable over
Schulhof and McMillen, but also denominate their affirmance as new
grounds of rejection under 37 C.F.R. § 41.50(b).

Claim 43
The Appellant criticizes one of the three reasons we gave for agreeing
with the Examiner’s position. We stated:
Second, the Appellants' argument that McMillen does not describe
“informing the consumer that the music selection is available for
purchase if said music selection is about to be made at a peer-to-peer
music sharing system" does not appreciate the fact that the claim
conditions the “informing” step on the music selection being “about to
be made at a peer-to-peer music sharing system.” The claim
encompasses the situation where no music selection "is about to be
made at a peer-to-peer music sharing system.” In that situation, there
is no requirement that the consumer be informed about a music
selection available for purchase and thus, in light of the scope of the
claim, it is not necessary to look to McMillen for a disclosure of
“informing the consumer that the music selection is available for
purchase if said music selection is about to be made at a peer-to-peer
music sharing system.”
Decision 14. We will modify the Decision to eliminate this reason - as it is
not necessary to rely on it. We will rely on the other two reasons given in
the Decision, which reasons have not been challenged.
We would like to make this comment, however.
We agree with the Appellants (Request 10-11) that a method claim
may present contingent steps and that the law clearly requires that the
contingent steps be addressed in order that a rejection of such a method
claim can be sustained. But the reason we indicated that “[t]he claim
encompasses the situation where no music selection “is about to be made”
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(Decision 14) was not because we had decided the contingency need not be
addressed but because the step was contingent on an event whose
culmination was impossible to determine. The claim conditions a
consumer’s informing of the availability for purchase of a music selection on
a selection about to be made. A selection that is about to be made is but a
prospective decision about making a music selection unbounded by time or
action. As reasonably broadly construed, the condition “about to be made”
covers the mere thought of making a selection. Thus, the method of claim 43
is not limited so as to require making a selection. A selection need only be
about to be made. Thus, the claimed method covers a situation where a
music selection is never in fact made. That was the source of our difficulty.
The Appellant also argues that “the Board failed to appreciate that
Schulhof teaches away from substituting a pay per view cable system with a
peer-to-peer system, [and therefore] it was error for the Board to find claim
43 obvious by substituting McMillen’s peer-to-peer system for Schulhof’s
pay per view system.” Request 13. This argument is not persuasive as to
error in the Decision because it was not presented in the Appeal Brief. This
is not a point that we could have “misapprehended or overlooked”
(§ 41.52(a)(1)) because it was never raised in the Brief for our consideration.
This is a new argument not raised in the Brief and no good cause has been
shown as to why it should now be permitted for our consideration.
See § 41.52(a)(1). Accordingly, the argument is not persuasive as to error
in the Decision.

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CONCLUSION
We have carefully considered the arguments that the Appellants have
set forth in the Request but, for the foregoing reasons, we do not find them
persuasive as to error in the decision to affirm the rejections of claims 40-42,
48, 50, 52-54, 60, 62, and 64-71 under 35 U.S.C. §102(b) as being
anticipated by Schulhof; claims 49, 51, 61, 63, and 72 under 35 U.S.C. §
103(a) as being unpatentable over Schulhof; and, claims 43-47 and 55-59
under 35 U.S.C. §103(a) as being unpatentable over Schulhof and McMillen.
However, the Decision’s claim construction analysis is modified, as
discussed in this Decision on Request for Rehearing with respect to claim 40
(See supra). The modified claim construction analysis applies to all the
claims on appeal and renders the rationale for affirming the rejections
substantially different from that of the Examiner. Accordingly, we grant the
Request to the extent that we have modified our position and, though we
maintain the decision to affirm the rejections, the affirmance denominates
new grounds of rejection under 37 C.F.R. § 41.50(b).
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an
appropriate amendment of the claims so
rejected or new evidence relating to the claims
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so rejected, or both, and have the matter
reconsidered by the examiner, in which event
the proceeding will be remanded to the
examiner . . . .

• (2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the
Board upon the same record . . . .
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) (2007).

GRANTED; 37 C.F.R. § 41.50(b)

mev

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