Ex Parte Nuttall

Board of Patent Appeals and Interferences

Jun 30, 2005

09757951 (B.P.A.I. Jun. 30, 2005)

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The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte FRANCOIS - XAVIER NUTTALL
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Appeal No. 2005-0788
Application 09/757,951
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ON BRIEF
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Before JERRY SMITH, SAADAT and MacDONALD, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 9-13, 17-21, 24-30 and
34-37. Claims 14-16, 22, 23, 31-33, 38 and 39 have been
indicated to contain allowable subject matter by the examiner.
Claims 40-43 stand withdrawn from consideration as being directed
to a nonelected invention.
Appeal No. 2005-0788
Application 09/757,951
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The disclosed invention pertains to a method or
reconciling node for managing access to a digital work.
Representative claim 9 is reproduced as follows:
9. A method for managing access to a digital work, the
method for execution by a reconciling node, the method
comprising:
receiving at the reconciling node via a network a first
report, the first report being provided in response to a
transaction that provided the digital work from a content
providing node to a content requesting node, the first report
comprising a transaction identifier, the transaction conducted in
response to a request originated by the content requesting node;
receiving at the reconciling node via the network a second
report that originated from a content managing node in response
to supplying by the content managing node information to validate
the request, the second report comprising a value and a payee
identifier;
comparing at the reconciling node the value and the
transaction identifier; and
transmitting from the reconciling node onto the network a
message enabling a credit to an account corresponding to the
payee identifier, transmitting being in response to comparing.
The examiner relies on the following reference:
Ginter et al. (Ginter) 5,910,987 June 8, 1999
Claims 9-13, 17-21, 24-30 and 34-37 stand rejected under
35 U.S.C. § 102(e) as being anticipated by the disclosure of
Ginter.
Appeal No. 2005-0788
Application 09/757,951
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Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evidence
of anticipation relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in rebuttal
set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon does not support the examiner’s
rejection of the claims on appeal. Accordingly, we reverse.
Appellant has indicated that for purposes of this appeal
the claims will all stand or fall together as a single group
[brief, page 4]. Consistent with this indication appellant has
made no separate arguments with respect to any of the claims on
appeal. Accordingly, all the claims before us will stand or fall
together. Note In re King, 801 F.2d 1324, 1325, 231 USPQ 136,
137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ
Appeal No. 2005-0788
Application 09/757,951
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1, 3 (Fed. Cir. 1983). Therefore, we will consider the rejection
against independent claim 9 as representative of all the claims
on appeal.
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention as well
as disclosing structure which is capable of performing the
recited functional limitations. RCA Corp. v. Applied Digital
Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore and
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ
303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
The examiner has indicated how he finds the claimed
invention to be fully met by the disclosure of Ginter [final
rejection, pages 3-5; incorporated into answer at page 3].
Appellant argues that the rights distributor 106 of Ginter does
not meet several recitations of each of the independent claims.
Specifically, appellant points out in some detail why Ginter
fails to meet all the recitations of the two receiving steps and
the comparing step of the claimed invention [brief, pages 4-13].
The examiner responds by noting several teachings of Ginter
[answer, pages 3-5]. Appellant responds by asserting that Ginter
Appeal No. 2005-0788
Application 09/757,951
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fails to support the supposed findings of the examiner [reply
brief].
We will not sustain the examiner’s rejection of the
claims for essentially the reasons argued by appellant in the
briefs. We agree with appellant that the examiner has failed to
establish a prima facie case of anticipation. The examiner’s
reference to brief portions of Ginter fails to explain how the
examiner has found Ginter to fully meet the claimed invention.
Independent claim 9 recites a reconciling node, a content
providing node, a content requesting node and a content managing
node. Claim 9 also recites a communication of first and second
specific reports between these nodes. We fail to see how the
specific communications recited in the claimed invention are
fully met by Ginter, and the brief citations to Ginter provided
by the examiner fail to explain how Ginter satisfies the very
specific recitations of the claimed invention. The examiner
should have identified what corresponds to each of the claimed
nodes in Ginter and what corresponds to the first and second
reports, the request and the message enabling a credit. The
examiner should not have assumed that we would be able to guess
exactly how he was reading the claimed invention on the
disclosure of Ginter.
Appeal No. 2005-0788
Application 09/757,951
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In summary, we have not sustained the examiner’s
rejection of the claims on appeal. Therefore, the decision of
the examiner rejecting claims 9-13, 17-21, 24-30 and 34-37 is
reversed.
REVERSED
JERRY SMITH )
Administrative Patent Judge )
)
)
)
MAHSHID D. SAADAT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ALLEN R. MacDONALD )
Administrative Patent Judge )
JS/ki
Appeal No. 2005-0788
Application 09/757,951
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