Ex Parte Kazim

Board of Patent Appeals and Interferences

Feb 15, 2011

11052653 (B.P.A.I. Feb. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ESKANDER KAZIM
____________

Appeal 2010-001857
Application 11/052,653
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL1

1 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 2010-001857
Application 11/052,653

2
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-13 and 15-19 which are all the claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellant’s claimed invention is directed a system to deliver a
digital good from a seller to a buyer (Spec. [0005]). Claim 1, reproduced
below with the numbering in brackets added, is representative of the subject
matter of appeal.

1. A system to deliver a digital good from a seller to a buyer, the
system including:
[1] an interface to receive a digital goods package from the
seller, the digital goods package including the digital good and a
buyer identifier;
[2] digital goods storage to store the digital goods package;
an identifier extractor to extract the buyer identifier from the digital
goods package; and
a notifier to notify the buyer, based on the buyer identifier, that
the digital good has been received from the seller and is ready to be
collected by the buyer,
wherein, after having sent the notification that the digital good
is ready to be collected, the system allows the buyer to access and
retrieve the digital good.

Appeal 2010-001857
Application 11/052,653

3
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Kobata US 2003/0023695 A1 Jan. 30, 2003
Maari US 2004/0073451 A1 Apr. 15, 2004
Brentano US 2005/0033652 A1 Feb. 10, 2005

The following rejections are before us for review:
1. Claims 1-2, 5-9, 12-13, 15-16, and 18-192 are rejected under 35
U.S.C. § 103(a) as unpatentable over Maari and Brentano.
2. Claims 3-4, 10-11, and 17 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Maari, Brentano, and Kobata.

THE ISSUES
With regards to claims 1-7, the issue turns on whether the cited prior
art discloses claim limitation [1] cited above. With regards to claims 8-13
and 15-19 the issue turns on whether the cited prior art discloses a similar
claim limitation.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:3

2 The Appellants have indicated that claim 14 was cancelled in the Appeal
Brief (Brief, 4).
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).
Appeal 2010-001857
Application 11/052,653

4
FF1. Maari has disclosed a method of controlling digital content and a
method of reproducing digital content (Title).
FF2. Maari discloses that in Fig. 16 that the controller 16 is part of the
player 1 [0148]. Maari at Fig. 2 also discloses the controller 16 is part of the
player 1. Maari discloses that the user 200 has a digital content reproducing
apparatus (player 1) [0052].
FF3. Maari at [0150] discloses that the controller 16 generates the ID of the
digital content. The controller 16 adds the user ID read to the generated data
and sends it to the user terminal 50.
FF4. Maari at Figs. 13, 15-16, [0131-0134], and [0167] does not
specifically disclose an interface to receive a digital goods package from the
seller with the digital goods package including the digital good and a buyer
identifier.

ANALYSIS
The Appellant argues that the rejection of claim 1 is improper because
the cited prior art fails to disclose claim limitation [1] identified above (Br.
9-10, Reply Br. 2-3).
In contrast, the Examiner has determined that Maari discloses the
cited claim limitation at Figs. 13, 15-16, [0131-0134], and [0167] (Ans. 3,
6).
We agree with the Appellant. Claim limitation [1] requires:
“an interface to receive a digital goods package from the seller, the
digital goods package including the digital good and a buyer
identifier” (claim 1).

Appeal 2010-001857
Application 11/052,653

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Thus the claim requires in part an interface to receive from a seller a
digital goods package which includes a buyer identifier in some manner.
Maari has disclosed at [0150] that the controller 16 generates an user ID
(FF3) but the controller 16 has been shown to actually be part of the user’s
player 1 (FF2) so the user ID referred to is not “received from the seller”
since it is generated by the user’s player 1 itself. The other cited portions of
Maari fail to specifically disclose claim limitation [1] as well (FF4). For
these reasons the rejection of claim 1 and its dependent claims is not
sustained. Independent claims 8 and 15 contain a similar limitation and the
rejection of these claims, and their dependent claims, is not sustained for
these same reasons.

DECISION
The Examiner’s rejection of claims 1-13 and 15-19 is reversed.

REVERSED

MP

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