Ex Parte Nuzzi

Patent Trial and Appeal Board

Feb 26, 2016

13081367 (P.T.A.B. Feb. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/081,367 04/06/2011 Frank Anthony Nuzzi
49845 7590 03/01/2016
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
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.
2043.913US1 3785
EXAMINER
NIGH, JAMES D
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/01/2016 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):
USPTO@SLWIP.COM
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK ANTHONY NUZZI
Appeal2013-008442
Application 13/081,367
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE 1
Appellant seeks our review under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-20. We affirm.
1 The Appellant identifies eBay Inc. as the real party in interest. (Appeal
Br. 2).
Appeal2013-008442
Application 13/081,367
THE CLAIMED INVENTION
Appellant claims a method and system to confirm ownership of digital
goods. (Spec. para. 1 ).
Claim 1 is illustrative of the claimed subject matter:
1. A computer-implemented system comprising:
receiving, from a client device via a data network
interface, a request for a digital good;
completing one or more micro transactions with respect
to a financial account;
generating, using at least one processor, a code utilizing
information derived from the one or more micro transactions;
embedding the code into a first copy of the digital good,
the code to be used to confirm ownership of the digital good.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Walker
Spomy
Ho
US 2004/0127277 Al July 1, 2004
US 2005/0289081 Al Dec. 29, 2005
US 2008/0022086 Al Jan. 24, 2008
REJECTIONS
The following rejections are before us for review.
The Examiner rejected claims 11-20 under 35 U.S.C. § 112, second
paragraph, as indefinite.
The Examiner rejected claims 1, 3, 5, 8-11, 13, 15, and 18-20 under
35 U.S.C. § 102(b) as anticipated by Spomy.
The Examiner rejected claims 2 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Spomy.
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The Examiner rejected claims 4 and 14 under 35 U.S.C. § 103(a) over
Sporny and Walker.
The Examiner rejected claims 6, 7, 16, and 17 under 35 U.S.C.
§ 103(a) over Sporny and Ho.
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. The Specification describes a "financial micro transaction is a financial
transaction that involves a deposit or a withdrawal of certain, typically
small, amount to/from a financial account of a user." (Para. 13).
2. The Specification describes by example that "a DRM key may be
generated to include encrypted information about the user and the one
or more micro transactions (e.g., the user's account number, the micro
transaction amount, etc., e.g., using Secure Hash Algorithm (SHA)[)]."
(Para. 15).
3. The ordinary and customary definition of the term code, as defined by
Merriam Webster's Collegiate Dictionary (online edition), is: "a system
of signals or letters and symbols with special meanings used for sending
messages."
4. Sporny discloses generating a code by embedding a watermark in a
digital file, where:
the seller, through seller data processor 275, tags the digital
data file 175 being sold with an internal (contained in the file
meta-data) or external (as a separate file) digital receipt of sale
or watermark as indicated at step 489b. The watermark
preferably contains identifying information for the buyer data
processor and seller data processor.
(Para. 37).
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5. Spomy discloses it is known to pay for digital rights using "micro-
payment applications." (Para. 45).
6. Ho discloses "generating one or more new subject keys, recovering one
or more current subject keys, and/or initiating the process to issue a
replacement token." (Para. 34 ).
7. Spomy discloses, "When a user wishes to make a purchase, the user
contacts verification authority 25 and credits their buyer account 200
using a credit card, debit card or other funds transfer method, as
indicated at step 600." (Para. 42).
8. Spomy discloses dividing the purchase value of the digital data as
credits between a seller account and plural payees. (Para. 43).
ANALYSIS
Rejection of claims 11-19 under 35 USC§ 112
The Examiner found that "it is unclear how a physical system can be
constructed from non-physical abstractions that are not embodied in any
physical structure .... " (Final Act. 5).
Appellant argues the claims are not indefinite because they recite
"specific modules and their respective functions that are achieved using at
least one processor." (Appeal Br. 15, Reply Br. 8). One example limitation
is "a communications module to receive, using at least one processor, from a
client device via a data network interface, a request for a digital good."
We agree with Appellant. Claims 11-19 recite systems comprising
software modules that are intended to provide certain functions when
executed on the processor of a computer, but no computer structure is
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positively recited as being part of the system, which claims only "modules."2
However, the Specification is clear to recite, for example, at paragraph 26,
that the embedded module can be "configured to embed code", which we
find means that the code remains fixed within each of the modules.
Rejection of claim 20 under 35 USC§ 112
Appellant argues claim 20 is not indefinite because it is in Beauregard
format for a medium claim. (Appeal Br. 15, Reply Br. 8). We agree.
Rejection under 35 USC§ 102(b)
Initially, we note that the Appellant argues independent claims 1, 11,
and 20 together as a group. (App. Br. 13). Correspondingly, we select
representative claim 1 to decide the appeal of these claims, with remaining
claims 11 and 20 standing or falling with claim 1. Appellant does not
provide a substantive argument as to the separate patentability of claims 3, 5,
8-10, 13, 15, 18, and 19 that depend from claims 1 and 11. Thus claims 3,
5, 8-11, 13, 15, and 18-20 stand or fall with claim 1. See 37 C.F.R. §
41.37( c )(1 )(vii).
Appellant focuses arguments on the terms "micro transaction" and
"code," so we construe each term.
The Specification's definition for "micro payment" uses a term of
degree, namely "small." (FF 1 ). When a word of degree is used, we must
determine whether the specification provides some standard for measuring
that degree. See Seattle Box Company, Inc. v. Industrial Crating & Packing,
2 Claim 11 recites four such modules; dependent claims 14 and 1 7 each
introduce one additional module.
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Inc., 731F.2d818, 826 (Fed. Cir. 1984). We find no such standard for what
amount constitutes a "small" deposit or withdrawal. Accordingly, we
construe the term "small" to mean any value which would constitute a
deposit or a withdrawal, and thus the term, "micro transaction", simply
means a payment transaction where a deposit or a withdraw occurs between
two different accounts.
The Specification does not define a "code" or describe precisely how
a code is generated, but the Specification describes by example that a digital
rights management key may be created using a "Secure Hash Algorithm."
(FF 2). We rely on the ordinary and customary meaning of "code," which is
"a system of signals or letters and symbols with special meanings used for
sending messages." (FF 3).
Appellant argues there is "no indication in paragraphs 36 and 45, or
anywhere else in Spomy, that Spomy contemplates the use of micro
transactions in the process of generating a code in general or generating a
code that would be suitable for use in confirming ownership of a digital
good." (Appeal Br. 11; see also Reply Br. 2---6).
We are not persuaded by Appellant's argument for three reasons.
First, Spomy applies to transactions for digital content, and thus is in the
field of rights management for digital content. (FF 4 ). Spomy discloses
generating a code, in the form of a watermark, embedded in a digital file,
once the file is purchased serving to convey notice that the content in which
the watermark is stored was acquired by the buyer. (Id.). Spomy discloses
paying for the digital content via a payment transaction by using a credit
card, debit card or other funds transfer method. (FF 7) Since we construe
the term "micro transaction" to mean any payment transaction without
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deference to amount value, we find that Sporny meets the claim
requirements. Second, and alternatively, we find that Sporny discloses
dividing the purchase value as credits between a seller account and plural
payees. (FF 8). Since the credits paid to each of the seller and plural payees
would be smaller than the actual payment paid by at purchase, we find that
these plural credits constitute micro transactions. (FF 1, 8). Third, and
alternatively, Sporny explicitly discloses it is known to pay for digital rights
using "micro-payment applications". (FF 5).
Appellant also argues the digital receipts in Sporny are "not the same"
as a "code." (Appeal Br. 12-13).
We are not persuaded by Appellant's argument, because, as we
explain above, a watermark includes letters, such as buyer identification
from a purchase transaction, with special meaning, such as payment
confirmation, that sends a message, such as ownership. (FF 3, 4).
Rejection of claims 7 and 17 under 35 US.C. § 103(a)
Each of dependent claims 7 and 17 recite:
in response to the request from a requestor to reacquire
the digital good, providing an instruction to the requestor to
effectuate subsequent one or more micro transactions that
match the one or more completed micro transactions with
respect to the financial account;
determining that the subsequent one or more micro
transactions match the one or more completed micro
transactions with respect to the financial account;
responsive to the determining, recreating the code
utilizing information derived from the one or more micro
transactions; and
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embedding the recreated code into a further copy of the
digital good, the recreated code to be used to confirm
ownership of the digital good.
Appellant argues claims 7 and 17 by reference to the arguments
directed to claim 1, and by arguing the Examiner has provided no explicit
disclosure of the steps in the cited art. (Appeal Br. 13-15, Reply Br. 6-8).
Because we find no shortcomings in the rejection of claim 1, we are
not persuaded by those arguments. In addition, because the Examiner has
cited paragraph 34 of Ho, which discloses generating new keys, we
determine that the Examiner has established a prima facie case of
obviousness. In addition, the claim language encompasses the situation
where the steps of conducting a purchase transaction, and embedding the
ownership-coded message in the file, are merely a repeat of the steps in
claim 1, where a person simply purchases a second copy of the digital
content, at the same price as originally, and the new information is coded
into the file as before. See Peifect Web Tech., Inc. v. InfoUSA, Inc.; 587
F.3d 1324, 1330 (Fed. Cir. 2009) (holding it obvious to repeat a known
procedure until success is achieved).
Rejections of claims 2, 4, 6, 12, 14, and 16 under 35 US.C. § 103(a)
We affirm the rejections of claims 2, 4, 6, 12, 14, and 16 under
35 U.S.C. § 103(a), which were not argued separately. (Appeal Br. 13).
CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1, 3, 5, 8-11, 13, 15, and
18-20 under 35 U.S.C. § 102(b).
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The Examiner did not err in rejecting claims 2, 4, 6, 7, 12, 14, 16, and
17 under 35 U.S.C. § 103(a).
The Examiner erred in rejecting claims 11-20 under 35 U.S.C. § 112,
second paragraph as indefinite.
DECISION
For the above reasons, the Examiner's rejections of claims 1-20 are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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