Ex Parte O

Board of Patent Appeals and Interferences

Aug 31, 2010

11026993 (B.P.A.I. Aug. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/026,993 12/29/2004 Michael O'Donnell 1690-7-3 1413
996 7590 08/31/2010
GRAYBEAL JACKSON LLP
400 - 108TH AVENUE NE
SUITE 700
BELLEVUE, WA 98004
EXAMINER
BADII, BEHRANG
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
08/31/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL O’DONNELL
____________

Appeal 2009-007493
Application 11/026,993
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R.
MOHANTY, Administrative Patent Judges.

CRAWFORD, 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 2009-007493
Application 11/026,993

2
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
Examiner’s final decision rejecting claims 13 to 23. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b) (2002).
We AFFIRM.
BACKGROUND
Appellant’s invention is directed to a method of tracking distribution
of information for works of authorship (Spec., paras. [003], [004]).
Claim 13 is illustrative:
13. A method in a computer network for
tracking information about distribution of works of
authorship by tracking accesses made to web pages
providing information about the works of
authorship, comprising:
(a) establishing for a publisher of works of
authorship a publisher identifier,
(b) establishing for the publisher an
identifier of a work of authorship published by the
publisher;
(c) establishing for each of at least two
distributors a distribution identifier;
(d) publishing the work with the publisher
identifier, the work identifier, and a selected one of
the at least two distribution identifiers;
(e) providing to client computers on the
network from a server on the network access to a
web page with information about the work of
authorship, the web page being published
separately from the work of authorship and not
containing the work of authorship;
(f) receiving at the server computer from a
client computer a request to access the web page
along with a specification of the selected
distribution identifier; and
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Application 11/026,993

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(g) in response, tracking information
resulting from said access according to the selected
distribution identifier.
The Examiner relies on the following prior art references as evidence
of unpatentability:
Sidman US 2004/0148503 A1 Jul. 29, 2004
Tamir US 2005/0188318 A1 Aug. 25, 2005

Appellant appeals the following rejection:
1. Claims 13 to 23 under 35 U.S.C. § 103(a) as unpatentable over
Sidman in view of Tamir.

APPELLANT’S CONTENTIONS
Appellant contends that the prior art does not disclose distribution
identifiers and that there is no motivation to combine the teachings of the
prior art references. (App. Br. 5 to 6).

ISSUES
Does the prior art disclose distribution identifiers?
Did the Examiner properly combine the teachings of Sidman and
Tamir?

FACTUAL FINDINGS
We adopt the Examiner’s findings in the Answer and [Final or Non-
Final] Office Action as our own. We add the following factual findings:
Appeal 2009-007493
Application 11/026,993

4
Appellant’s Specification discloses a sub-identifier CCCC that may
identify the distributor of content such as Yahoo, CNN, or a newspaper so
that web page access information can be tracked (para. [039]).

ANALYSIS
The Appellant's argument that the prior art does not disclose a
distribution identifier as claimed is unconvincing. Tamir discloses that
website usage by individual web users is tracked by assigning a unique
application identifier for each website (Abstr.; paras. [0001], [0068]).
Appellant’s Specification discloses that the distribution identifier is a unique
identifier for a website such as Yahoo or CNN. This is exactly what Tamir
discloses.
The Appellant’s argument that there is no motivation to combine the
teachings of Sidman and Tamir is unconvincing. We initially note that the
Supreme Court has stated that the teaching and motivation test is not the
only test for determining the proper combination of references. We hold that
combining prior art elements such as the website identifiers disclosed in
Tamir with the method disclosed in Sidman is no more than combining prior
art elements according to known methods to yield predictable results as
would have been obvious to a person of ordinary skill in the art at the time
of the invention. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 415-16
(2007). In addition, as Sidman discloses in the Abstract that the Digital
rights management system therein disclosed tracks usage of digital content,
there is a suggestion in Sidman to track the websites visited by users. Such
Appeal 2009-007493
Application 11/026,993

5
information about the websites visited provides more tracking information.
Therefore, in our view there is a clear motivation to combine the website
tracking disclosed in Tamir with the Sidman method.
We will therefore sustain the Examiner’s rejection of claim 13. We
will also sustain the Examiner’s rejection of claims 14 to 23 because the
Appellant has not argued for the separate patentability of these claims.

DECISION
We AFFIRM the Examiner’s 35 U.S.C. § 103(a) rejection of claims
13 to 23 as unpatentable over Sidman in view of Tamir.

TIME PERIOD
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) (2007).

AFFIRMED

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GRAYBEAL JACKSON, LLP
400 - 108TH AVE., N.E.
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BELLEVUE, WA 98004