Ex Parte Marjadi et al

Board of Patent Appeals and Interferences

Apr 28, 2011

11061166 (B.P.A.I. Apr. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DHIREN MARJADI,
JAMES P. DAGG, and
JAMES R. SCAPA
___________

Appeal 2009-010573
Application 11/061,166
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Dhiren Marjadi et al. (Appellants) seek our review under 35 U.S.C. §
134 (2010) of the final rejection of claims 1-4 and 6-11. We have
jurisdiction under 35 U.S.C. § 6(b) (2010).

SUMMARY OF DECISION
We REVERSE. 1

THE INVENTION
This invention is a method and apparatus “for licensing and managing
the usage of digital content.” Specification [0002].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of accessing digital content
comprising the steps of: providing a suite of
selectable discrete pieces of digital content at a
single host source;
assigning a number of licensed units to each
digital content in the suite of digital content;
individual independent entities forming at
least one discrete customer group, the at least one
group formed of a plurality of individual
customers;
assigning an identification to each customer
in the one customer group to identify each
customer as part of one discrete customer group;

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Mar. 7, 2008) and Reply Brief (“Reply Br.,” filed July 7, 2008,
2009), and the Examiner’s Answer (“Answer,” mailed June 4, 2008).

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selecting a group of individual digital
content by each customer group from the suite of
digital content for allowable access by the
customers in the one customer group, respectively,
from the source;
acquiring a total number of group licensed
units by the one customer group; and
allowing access, according to a source
license management control using the group
licensed units, to at least one piece of digital
content in the group of digital content selected by
the one customer group, from the suite of digital
content to at least one customer in that the one
customer group.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Christiano
Wyman
Parsons
US 5,671,412
US 5,745,879
US 2002/0007298 A1
Sept. 23, 1997
Apr. 28, 1998
Jan. 17, 2002

The following rejections are before us for review:
1. Claims 1-4, 6-9, and 11 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Christiano and Parsons.
2. Claim 10 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Christiano and Wyman.
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ISSUE
The issue is whether claims 1-4, 6-9, and 11 are unpatentable under 35
U.S.C. § 103(a) over Christiano and Parsons. Specifically, the major issue is
whether the Examiner has reasonably broadly construed the limitation of
“individual independent entities forming at least one discrete customer
group” to encompass the department within a business or organization as
disclosed in Christiano and Parsons. The rejection of claim 10 as
unpatentable under 35 U.S.C. § 103(a) over Christiano and Wyman also
turns on this issue.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. The Specification does not contain an express definition of
“independent.”
2. A definition of “independent” is “[n]ot dependent on or affiliated
with a larger or controlling group or system.” Webster’s II New
Riverside University Dictionary 622 (1984) (Entry for
“independent.”)
3. Paragraph [0023] of the Specification states: “The present method
of accessing digital content enables individuals which may not be
normally related by a common interest, such as a business or home
network.”
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4. Paragraph [0013] of the Specification states “it would be desirable
to provide a club or group based approach whereby any number of
unrelated individuals, either at businesses, home, etc., can form a
group and act in the same manner as a company by operating under
a license.”

ANALYSIS
The rejection of claims 1-4, 6-9, and 11 under § 103(a) as being
unpatentable over Christiano and Parsons
The Appellants argue that neither Christiano nor Parsons discloses
individual independent entities forming at least one discrete customer group,
where at least one group is formed of a plurality of individual customers
because “[t]he users in Parson (as well as in Christiano) are directly related
to each other by being part of areas or departments within a business
organization.” (App. Br. 6). The Appellants further argue that paragraph 23
of the Specification defines individual independent entities as not being
businesses. See Reply Br. 2.
The Examiner argues that the broadest reasonable construction of this
limitation is:
any number of unrelated individuals, either at businesses, home,
etc., can form a group and act in the same manner as a company
(specification, par. 13). As such, individuals in a major
division of a business are independent entities forming discrete
groups such as accounting or engineering (Parsons, c2, ll. 59-
61). Each of the groups represents a customer group.
Answer 11. See FF 4.
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
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should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1369 (Fed. Cir. 2004).
“[W]e look to the specification to see if it provides a definition
for claim terms, but otherwise apply a broad interpretation. As
this court has discussed, this methodology produces claims with
only justifiable breadth. In re Yamamoto, 740 F.2d 1569, 1571
(Fed. Cir. 1984). Further, as applicants may amend claims to
narrow their scope, a broad construction during prosecution
creates no unfairness to the applicant or patentee. Am. Acad.,
367 F.3d at 1364.”
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007).
Limitations appearing in the specification but not recited in the claim are not
read into the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364,
1369 (Fed. Cir. 2003).
The issue is whether the Examiner has reasonably broadly construed
“individual independent entities forming at least one discrete customer
group, the at least one group formed of a plurality of individual customers”
to encompass departments within a single company or business as disclosed
in Christiano and Parsons. First, we note that contrary to the Appellants’
argument (see Reply Br. 2), the Specification does not contain an express
definition of an independent. FF 1. See FF 3. A definition of
“independent” is “[n]ot dependent on or affiliated with a larger or
controlling group or system.” FF 2. Giving the limitation the broadest
reasonable construction in light of the Specification while not reading
limitations from the Specification into the claims, we construe “individual
independent entities” to require that the entities are not dependent on or
affiliated with a large or controlling group or system. Departments or
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business areas of a single business or defined organization (see Answer 13)
as disclosed in Christiano and Parsons are dependent on and affiliated with a
large or controlling group (i.e. the single business or defined organization).
The departments or business areas of a single business are not the claimed
“individual independent entities” as we have construed the limitation above.
Accordingly, we find that the Examiner has not established a prima facie
showing of obviousness of claim 1. Accordingly, we find that the
Appellants have overcome the rejection of claim 1 and claims 2-4, 6-9, and
11, dependent thereon, under 35 U.S.C. § 103(a) as being unpatentable over
Christiano and Parsons.

The rejection of claim 10 under §103(a) as being unpatentable over
Christiano and Wyman.
This rejection is directed to a claim dependent on claim 6, whose
rejection we have reversed above. For the same reasons, we will not sustain
the rejection of claim 10 over the cited prior art. Cf. In re Fritch, 972 F.2d
1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the
independent claims from which they depend are nonobvious."). We note
that in rejecting claim 10, the Examiner does not rely upon Wyman to cure
the deficiency of Christiano discussed above. See Answer 8-9. Therefore,
we find that the Examiner has failed to establish a prima facie showing of
obviousness in rejecting claim 10 as unpatentable over the combination on
Christiano and Wyman. Accordingly, we find that the Appellants have
overcome the rejection of claim 10 under 35 U.S.C. § 103(a) over Christiano
and Wyman.

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DECISION
The decision of the Examiner to reject claims 1-4 and 6-11 is
reversed.
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) (2010).

REVERSED

erc