Ex Parte Neumann et alDownload PDFPatent Trial and Appeal BoardFeb 23, 201612694206 (P.T.A.B. Feb. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/694,206 01/26/2010 David Lawrence Neumann 133036 7590 02/25/2016 DLA Piper LLP (US) 2000 University A venue East Palo Alto, CA 94303-2215 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 337722-305000/P8825US1 5548 EXAMINER JASMIN, LYNDA C ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 02/25/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): AppleProsAdmin@dlapiper.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID LA WREN CE NEUMANN and PAY AM MIRRASHIDI Appeal2013-007664 Application 12/694,2061 Technology Center 3600 Before NINA L. MEDLOCK, BRUCE T. WIEDER, and AMEE A. SHAH, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Appellants' claimed invention "relates to subscriptions for digital content and, more particularly, to network-based renewal of subscriptions for digital content." (Spec. i-f 1.) 1 According to Appellants the real party in interest is Apple Inc. (Appeal Br. 1.) Appeal2013-007664 Application 12/694,206 Claims 1, 10-13, 19, and 20 are the independent claims on appeal. Claim 1 is illustrative and is reproduced below: 1. A computer-implemented method for renewing a subscription to digital content, the method comprising: determining, by a server computer, whether a previously acquired subscription to digital content needs to be renewed; determining, by the server computer, whether renewal of the subscription is authorized for renewal; processing, by the server computer, purchase of a subscription renewal for the subscription being renewed if determined that the subscription is authorized for renewal, wherein purchase of the subscription renewal includes receipt of payment for the subscription renewal; rendering, by the server computer, a renewal receipt available, the renewal receipt having an expiration date; subsequently receiving a request for a new subscription content; accessing the renewal receipt; and determining whether to transmit the new subscription content based upon the expiration date. REJECTIONS Claims 1--4, 9-13, 15, 16, 18-21, and 23 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Turcotte (US 2007/0041560 Al, pub. Feb. 22, 2007) and Plastina (US 2007/0299681 Al, pub. Dec. 27, 2007). Claims 5-8, 14, 17, and 22 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Turcotte and Official Notice.2 2 The Examiner takes Official Notice that it is old and well known in the art to: "send notices via email," "place renewal receipt in a download queue associated with the user account," and "determine whether a price 2 Appeal2013-007664 Application 12/694,206 Claims l, 13, and 19 ANALYSIS The Examiner finds that "determining whether to transmit the new subscription content based upon the expiration date" is disclosed in paragraph 26 of Plastina. (Final Action 3.) Appellants argue that "Plastina provides no teaching or suggestion for a renewal receipt having an expiration date" or for "determining whether to transmit the new subscription content based upon the expiration date." (Appeal Br. 10-11.) Instead, Appellants argue, "Plastina relies on payment status to provide access to media content." (Appeal Br. 11.) The Specification does not define "renewal receipt" but does say, with respect to two disclosed embodiments, that "[t]he renewal receipt authorizes a recipient to receive subscription content for a predetermined period of time." (Spec. i-fi-f 10, 12.) The Specification does not require the renewal receipt to take any particular form although claim 1 recites "the renewal receipt having an expiration date." has changed and requiring confirmation of renewal at the changed price prior to processing." (See Final Action 10, citing Official Action dated April 26, 2011 at 7-9.) Dependent claims 5-8 depend from claim 1. Dependent claims 14 and 1 7 depend from claim 13. Dependent claim 22 depends from claim 20. Claims 1, 13, and 20 are rejected under§ 103 in view of Turcotte and Plastina. The Examiner does not rely on Official Notice to cure any deficiencies in Turcotte. Therefore, we treat the omission of Plastina from the § 103 rejection of claims 5-8, 14, 17, and 22 as inadvertent. 3 Appeal2013-007664 Application 12/694,206 Turcotte discloses "recording or updating an expiration date of the subscriber/member's subscription or membership." (Turcotte i-f 11.) But the Examiner determines that Turcotte does not expressly show receiving a request for subscription content. Plastina shows subsequently receiving a request for a new subscription content (paragraph 26); accessing the renewal receipt (paragraph 26); and determining whether to transmit the new subscription content based upon the expiration date (paragraph 26). (Final Action 3.) Paragraph 26 of Plastina recites, in its entirety: If the user is already a subscriber, a payment status associated with the subscription information 118 is determined by the local media server 120 by communicating with the media service 102. The payment status indicates, for example, that the user account is paid-in-full, or a balance is due if continued access to the media service 102 is desired. The payment status also indicates whether a renewal is currently available to the user. After providing or presenting the payment status to the user, the media server 120 receives an indication of payment from the user for access to the media service 102. In such an embodiment, the indication of payment represents a renewal to the subscription. The subscription information 118 is updated, and the media content items 114 are available from the media service 102. In other words, Plastina bases access to content on the payment status rather than on an expiration date. Additionally, the Examiner makes no explicit finding as to whether the Plastina system is based on paying for individual content items or paying for access for a period of time. Turcotte updates the expiration date of a subscription when an invoice is created, not when payment is received. (Turcotte i-f 11.) In other words, Turcotte's expiration date is a function of billing rather than the receipt of payment. Therefore, we agree with Appellants that, in this 4 Appeal2013-007664 Application 12/694,206 context, "an invoice is different from and cannot be equated to a renewal receipt." (Appeal Br. 9.) The Examiner does not explain why it would have been obvious to modify Turcotte so that the expiration date is a function of receipt of payment rather than generation of a billing invoice. The Examiner also does not explain why it would have been obvious to modify Plastina to transmit new subscription content based on an expiration date rather than payment status. In view of the above, we are persuaded that the Examiner erred in rejecting claim 1 and claims 2-9 and 23, which depend from claim 1, under § 103. Independent claims 13 and 19 contain similar limitations except that claims 13 and 19 use the term "determine whether receipt is active based on the expiration date" in the final limitation. Therefore, for the same reasons we are persuaded that the Examiner erred in rejecting claims 13 and 19 and claims 14--18, which depend from claim 13, under § 103. Claims 10, 11, and 12 Independent claims 10, 11, and 12 recite "accessing the renewal receipt each time a request for [a] subscription content is received and prior to delivery of the subscription content to determine if the renewal receipt is active." The Examiner finds that "Plasina [sic] shows accessing the renewal receipt each time a request for a subscription content is received and prior to delivery of the subscription content to determine if the renewal receipt is active (paragraph 26)." (Final Action 4.) 5 Appeal2013-007664 Application 12/694,206 Appellants argue that this limitation is not shown in Plastina. [I]n Plastina, a payment status can indicate that a renewal is available, and then if renewed the payment status can be updated and media content can be available to user. Hence, if anything, Plastina relies on payment status to provide access to media content. However, the payment status in Plastina is not a renewal receipt as in claim 10, nor does the payment status in Plastina have an expiration date. Still further, the payment status Plastina [sic] is not taught or suggested to be evaluated to determine whether it is "active" when a request for a subscription content is received accessed and used in determining whether to transmit new subscription content. (Appeal Br. 17-18.) Regardless of whether Plastina's "payment status" is a "renewal receipt," paragraph 26 of Plastina does not show accessing the payment status information each time a request for a subscription content is received. Nor does the Examiner explain why it would have been obvious from the disclosure in Plastina to access payment status information each time a request for subscription content is received. Therefore, we are persuaded that the Examiner erred in rejecting claims 10, 11, and 12 under§ 103. Claim 20 Claim 20 recites (emphasis added): 20. A computer-implemented method for distributing digital content associated with a subscription to digital content, the method comprising: receiving, by at least one server computer, a renewal receipt from a client device, the renewal receipt authorizing the client device or its user to receive subscription content for a predetermined period of time; 6 Appeal2013-007664 Application 12/694,206 verifj;ing, by the at least one server computer, the renewal receipt received from the client device with an online commerce server that originated the renewal receipt; and enabling, by the at least one server computer, digital content associated with the subscription to be provided to the client device if the renewal receipt is verified by the online commerce server. The Examiner finds that "Plasina [sic] shows verifying the renewal receipt received from the client device with an online commerce server that originated the renewal receipt (paragraph 26)." (Final Action 9.) Appellants argue that [t]here is nothing in Plastina that indicates that its indication of payment is a "renewal receipt" as recited in claim 20 and certainly nothing in Plastina teaches or suggests verifying a renewal receipt (received from the client device) with an online server computer that originated the renewal receipt as recited in claim 20. (Appeal Br. 40.) Paragraph 26 of Plastina discloses that if a user pays at the time of the request for content, the user will receive access to the content. If the user previously paid, i.e., the user is a subscriber, that information is verified by the local media server 120 communicating with media service 102. (Plastina i-f 26.) It is in media service 102 that user profiles, including subscription information, are stored. (Plastina i-f 24.) Claim 20 calls for the server computer to receive "a renewal receipt from a client device" and to verify the renewal receipt with the server that originated the receipt. However, it is not clear what the client device provides to the server computer, i.e., local media server 120, that is verified by the media service 102. Nor is it clear that what the client device provides to the server 7 Appeal2013-007664 Application 12/694,206 computer for verification originated with the media server 102, i.e., that the verification is performed with the server that originated the renewal receipt. Therefore, we are persuaded that the Examiner erred in rejecting claim 20 and claims 21 and 22, which depend from claim 20, under § 103. DECISION The Examiner's rejections of claims 1-23 under 35 U.S.C. § 103(a) are reversed. REVERSED 8 Copy with citationCopy as parenthetical citation