Ex Parte Oliver et al

Board of Patent Appeals and Interferences

Aug 12, 2010

09036236 (B.P.A.I. Aug. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID M. OLIVER, WILLIAM P. DENSMORE JR., and
MICHAEL J. CALLAHAN
____________

Appeal 2009-005524
Application 09/036,236
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

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.
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STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of
the final rejection of claims 1-88 which are all the claims pending in the
application. Oral arguments were presented on May 6, 2010. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM.

THE INVENTION
The Appellants’ claimed invention is directed to a system for
managing client accounts and controlling access to resources over data
networks and for sharing client information and charges among a plurality
of service providers (Spec. 4:11-13). Claim 1, reproduced below, is
representative of the subject matter of appeal.

1. A system for managing client accounts and controlling access
to resources over data networks, said system comprising:
(a) a mechanism for sharing client information and charges
among a plurality of service providers;
(b) a client registration database maintained by one of the
service providers (its "home provider") and includes information
which selectively authorizes access to the resources of the other
service providers ("outside providers"), each service provider
maintaining an independent database of its respective clients;
(c) a settling means, separate from a respective home provider,
for settling accounts among service providers by charging the home
provider for access by its clients to the resources of the outside
providers, the settling means accessing a respective home provider
registration database, and communicating with an accounting database
maintained separately from a respective registration database;
(d) a payment means adapted to assure that the outside providers
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are then paid for that access;
(e) a sharing means adapted to allow the service providers to
share users without requiring an open account for each user at each
service provider; and
(f) a verification means including a token and an authentication
server adapted to allow each service provider to determine if a
particular client is registered by a home provider, verify that the client
has authenticated at his home provider, and determine that client's
access privileges and criteria.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Teper US 5,815,665 Sep. 29, 1998
Questions often asked by prospective Clickshare publishers;
Newshare Release; 1995. (Exhibit “L”).
Clickshare(sm) alpha up; “test drives” available; Newshare Corp.
Release; October 26, 1995. (Exhibit “O”).

The following rejections are before us for review:
1. Claims 1-8, 11-25, 28-34, 63-64, 66-72, and 74-881 are rejected
under 35 U.S.C. § 102(b) as anticipated by Clickshare Exhibit “O.”
2. Claims 9-10 and 26-27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Clickshare Exhibit “O” and Clickshare Exhibit “L.”
3. Claims 35-62 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Clickshare Exhibit “O” and Teper.

1 The Examiners Answer does not list claims 83-88 in this cited rejection at
page 18 of the Answer but does refer to these claims at page 23 of the
Answer therefore these claims are considered to be rejected under this
rationale as well.
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4. Claims 65 and 73 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Clickshare Exhibit “O,” Teper, and Clickshare Exhibit
“L.”

THE ISSUES
At issue is whether the Appellants have shown that the Examiner
erred in making the aforementioned rejections.
This issue turns on whether Exhibit “O” (Clickshare alpha up; “test
drives” available) is enabled as a prior art reference and whether the argued
claim limitations are provided by the cited reference.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:2
FF1. Clickshare Exhibit “O” discloses that an alpha version is “up” (Title)
and that alpha versions will be shipped “this week” (published Oct. 26,
1995). Exhibit “O” states that an initial base of Publishing Members will be
launched in early 1996 and that point publishers will be able to see each
others information. (Page 1).
FF2. Clickshare Exhibit “O” states in the “How It Works” section that:
“Aggregate micro-charges, settled monthly or more frequently, allocating
commissions, royalties and transaction fees, thus form the basis of a system
resembling an ATM network.” (Page 4).

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF3. Clickshare Exhibit “O” states in the “How It Works” section that: “A
portion of all fees accumulated by a user for all visited Clickshare-enabled
sites is retained by the user’s home Publishing Member. This is termed a
“referral commission.” And Newshare retains a portion for its role in
tracking and clearing transactions. At least 50 percent of each transaction
goes to the content owner as a royalty.” (Page 4).
FF4. Clickshare Exhibit “O” states in the “How It Works” section that:
“The second piece of essential software, the Clickshare token-validation
service (TVS) server, is run by Newshare Corp. or licensees. It creates and
validates authentication tokens, brokers non-personal user preferences
among publishers, and maintains “page visit” records from multiple
independent sites sortable by anonymous user number, page visited and site
ID.” (Pages 2-3).

PRINCIPLES OF LAW
Principles of Law Relating to Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).

Principles of Law Relating to Enablement of a Reference under
Anticipation Rejection
“In order to anticipate, a prior art disclosure must also be enabling,
such that one of ordinary skill in the art could practice the invention without
undue experimentation. The standard for enablement of a prior art reference
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for purposes of anticipation under section 102 differs from the enablement
standard under 35 U.S.C. § 112.” Novo Nordisk Pharm., Inc. v. Bio-
Technology Gen. Corp. 424 F.3d 1347, 1355 (Fed. Cir. 2005) (internal
citations omitted.) While section 112 “provides that the specification must
enable one skilled in the art to ‘use’ the invention,” Id. “section 102 makes
no such requirement as to an anticipatory disclosure. Rather, anticipation
only requires that those suggestions be enabled to one of skill in the art.”
Whether a prior art reference is enabling is a question of law based upon
the underlying factual findings.” Id (internal citations omitted). Proof of
efficacy is not required for a prior art reference to be enabling for purposes
of anticipation. Impax Labs. Inc. v. Aventis Pharm. Inc., 468 F.3d 1366,
1383. That is a section 102 prior art reference does not have to be
“effective” to be enabling and thus anticipating. Id. Rather, the proper issue
is whether the patent is enabling in the sense that it describes the claimed
invention sufficiently to enable a person of ordinary skill in the art to carry
out the invention. Impax Labs at 1383.

Principles of Law Relating to Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
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the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) In KSR, the Supreme Court emphasized “the need
for caution in granting a patent based on the combination of elements found
in the prior art” Id. at 415-16.

ANALYSIS
Claims 1-8, 11-25, 28-34, 63-64, 66-72, and 74-88
The Appellants argue that the rejection of claim 1 under 35 U.S.C.
§ 102(b) is improper (Br. 37-45). The Appellants do not contest that
Exhibit O describes the system that ultimately evolved into the claimed
invention, but rather assert that Exhibit O is not enabling because: 1) it
makes prophetic statements that are insufficient to permit persons of
ordinary skill in the art to practice the invention (Br. 36) 2) that the Exhibit
states that the product will be launched in 1996 which shows that these
functions were unavailable at that time (Br. 37) and that, 3) the Declarations
show that significant skill was required after the date to realize an operarable
version and that the invention was not reduced to practice (Br. 36-37) (See
also Reply Br. 2-6). The Appellants further argue that Exhibit O does not
disclose claim elements “c,” “d,” and “f” (Br. 43-45).
In contrast the Examiner has determined that Exhibit O discloses the
claimed invention because Exhibit O teaches the features of the claimed
elements “c,” “d,” and “f.” (Ans. 18-19).
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We agree with the Examiner. The Appellants argue that Exhibit O is
not a U.S. patent reference and that there is no presumption that the
reference is operable and that it is the Examiner’s burden to demonstrate that
the reference is enabling (Br. 38). Initially, we note that prior art patents are
presumed enabled as anticipatory art. Amgen Inc. v. Hoechst Marion
Rousel, Inc., 314 F.3d 1313, 1355 (Fed. Cir. 2003). As such, examiners are
entitled to reject claims under § 102 over these references without inquiring
whether their disclosures are enabled. Id. Rather, it is the Appellants’
burden to show non-enablement of these references. Id (citing In re Sasse,
629 F.2d 675, 681 (CCPA 1980)). Here, the reference “Exhibit O” is not a
prior art patent but instead a non-patent reference.
We acknowledge that there does not appear to be any binding
precedent precisely on the issue of enablement under 35 U.S.C. § 102 for
printed publications but in this case we see no reason why the same
requirement should not be applied to the non-patent reference at issue.
Indeed, while the Court in Amgen did not answer this issue, they did mention
that our stance would be a logical extension. (See Amgen, 314 F.3d at 1355
n.22 “We note that by logical extension, our reasoning here might also apply
to prior art printed publications as well, but as Sugitamo is a patent we need
and do not so decide today.”) Further, this Board has in fact decided cases
where the presumption of enablement of anticipatory non-patent prior art
references was at issue. See Given Imaging, Ltd. Appeal 2009-0649 at
Concurrence 1-6 (BPAI, non-precedential); Ex Parte Lu, Appeal No. 2007-
1893 at 4-7 (BPAI 2007, non-precedential); and Ex Parte Swartzel Appeal
No. 1998-2941 at 20-21 (BPAI 1999, non-precedential). Thus, the burden
of showing that Exhibit O as being a non-enabled non-patent reference in
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this case is placed up on the Appellants. We also note that the portion of
Exhibit O to which the Appellants specifically argue are non-enabled
(claimed elements “c,” “d,” and “f”) appear to reference features that could
be readily programmed by one of ordinary skill in the art further showing
that burden of non-enablement should be placed on the Appellants in this
case. The Appellants in the Appeal Brief at 36-42 fail to show that Exhibit
O is non-enabled as it appears to involve only routine computer
programming at the portions cited by the Appellants and the Appellants
burden in this regard has not been met.
Apart from non-enablement, the Appellants also argue that Exhibit O
does not disclose claimed element “c,” “d,” and “f” (Br. 43-45) from claim 1
which require:
(c) a settling means, separate from a respective home provider,
for settling accounts among service providers by charging the home
provider for access by its clients to the resources of the outside
providers, the settling means accessing a respective home provider
registration database, and communicating with an accounting database
maintained separately from a respective registration database;
(d) a payment means adapted to assure that the outside
providers are then paid for that access;
(f) a verification means including a token and an authentication
server adapted to allow each service provider to determine if a
particular client is registered by a home provider, verify that the client
has authenticated at his home provider, and determine that client's
access privileges and criteria. (Claim 1).

With regard to claimed element “c,” Clickshare Exhibit O states in the
“How It Works” section that: “Aggregate micro-charges, settled monthly or
more frequently, allocating commissions, royalties and transaction fees, thus
form the basis of a system resembling an ATM network” (FF2) and we
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determine that the claimed limitations for the “setting means” are disclosed
by the citation to Exhibit O’s micro-charges being settled monthly and the
allocating of commissions and royalties. The Clickshare Exhibit O settling
system operates like an ATM network (FF2) and would inherently have to
access a registration database (which would be identification based) of some
kind in order to allocate commissions with a separate accounting database
(which would be numerically based) of some kind.
With regard to claimed element “d,” Clickshare Exhibit O states in the
“How It Works” section that: “A portion of all fees accumulated by a user
for all visited Clickshare-enabled sites is retained by the user’s home
Publishing Member. This is termed a “referral commission.” And Newshare
retains a portion for its role in tracking and clearing transactions. At least 50
percent of each transaction goes to the content owner as a royalty” (FF3).
We determine that the cited claimed limitation for the “payment means”
are disclosed by Exhibits O’s citation to this tracking and clearing of
transactions.
With regard to claimed element “f,” Clickshare Exhibit O states in the
“How It Works” section that: “The second piece of essential software, the
Clickshare token-validation service (TVS) server, is run by Newshare Corp.
or licensees. It creates and validates authentication tokens, brokers non-
personal user preferences among publishers, and maintains “page visit”
records from multiple independent sites sortable by anonymous user
number, page visited and site ID (FF4). We determine that the claimed
limitation for the “verification means token” is disclosed by the citation to
Exhibits O’s “authentication tokens.”
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For these reasons we consider the Examiner to have established
a prima facie case of anticipation. Given that a prima facie case of
anticipation has been established for claim 1, we now turn to our
consideration of the Declarations.
Specifically, the First Declaration of William Densmore, Jr. is
directed to showing entitlement of the priority of invention with respect to
U.S. Patent 5,815,665 and not related to the enablement of Exhibit O as a
reference. Further, this Declaration provides insufficient evidence to show
that Exhibit O would have failed to enable one of ordinary skill in the art
with regards to the claimed elements “c,” “d,” and “f” of claim 1 based on its
disclosure.
The Second Declaration of William Densmore, Jr. is also directed to
showing entitlement of the priority of invention with respect to U.S. Patent
5,815,665. While the Second Declaration does state that Clickshare service
was in a alpha test and that it was not offered for sale prior to March 7, 1996
(paragraphs 5 and 6) there is insufficient evidence to show that Exhibit O
would have failed to enable one of ordinary skill in the art with regards to
the claimed elements “c,” “d,” and “f” of claim 1 based on its disclosure.
The Third Declaration of William P. Densmore, Jr. discusses Exhibit
O at paragraph 27, which then directs the discussion to paragraph 25 (where
Exhibit M is discussed). The discussion here also provides insufficient
evidence to show that Exhibit O would have failed to enable one of ordinary
skill in the art with regards to the claimed elements “c,” “d,” and “f” of
claim 1 based on its disclosure.
The Declaration of William Densmore, Jr., the Second Declaration of
William Densmore, Jr., and the Third Declaration of William P. Densmore
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Jr., have all been fully considered and all are also not deemed persuasive to
show non-enablement of Exhibit O or a lack of anticipation for the argued
cited claim limitations in this case. The cited Declarations fail to show that
one of ordinary skill in the art, given the disclosure of the claimed elements
“c,” “d,” and “f” would not have been enabled to make a respective
described “settling means,” “payment means” and “verification token
means” since each claimed element has been described and its
implementation appears to only require what would be routine computer
programming in the art which would not be out of the skill of one of
ordinary skill in the art. The cited Declaration’s as a whole fails to show
that Exhibit O is non-enabled or fails to anticipate the claim for the cited
argued limitations.
For these above reasons, the rejection of claim 1 is sustained. With
regards to the rejection of claims 2-8, 11-25, 28-34, 63-64, 66-72, and 74-88
under 35 U.S.C. § 102(b) the Appellants have provided essentially only the
same arguments that have been addressed above. Note that a statement that
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim. 37 C.F.R. § 41.37(o)(1) (2008). For
the same reasons given above, the rejection of these claims is also sustained.

Claims 9-10 and 26-27
The Appellants at page 65 argues that the rejection of claims 9 and 26
under 35 U.S.C. § 103(a) as unpatentable over Clickshare Exhibit “O” and
Clickshare Exhibit “L” is improper because the documents are “prophetic”
(Br. 65-66) but provides no arguments beyond those addressed above, and
for the same reasons given above, this argument is rejected.
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The Appellants also argue that there is no evidence that the Clickshare
Exhibit L was released in 1995 (Br. 65-66) but provide insufficient evidence
to show this. Note that the Exhibit “L” bears a copyright date of 1995. The
Appellants also state at page 65 that this date is not disputed by the Third
Declaration of William Densmore, Jr. (Br. 65-66) and for these reasons, this
argument is rejected as well.
For claims 9 and 26 the Appellants merely cite what each respective
claim recites. Again, a statement that merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.
37 C.F.R. § 41.37(o)(1) 2008. For these reasons the rejection of claims 9
and 26 is sustained.
With regards to claims 10 and 27, the Examiner has acknowledged
that neither Exhibit O nor Exhibit L teaches the use of a User Data Protocol
to accomplish acceptance (Ans. 10-11) but has determined that which
specific protocol to use would have been an obvious matter of protocol
choice and we agree. The Appellants have argued that such a substitution
would not have been obvious in a transactional environment but we disagree
and see such a substitution as an obvious matter of protocol choice. For
these reasons the rejection of claims 10 and 27 is also sustained.

Claims 35-62
With regard to the rejection of claim 35 under 35 U.S.C. § 103(a)
as unpatentable over Clickshare Exhibit “O” and Teper the Appellants do
not specifically argue for any specific claim limitations but assert that the
Declaration of David M. Oliver, William P. Densmore, Jr. and Michael J.
Callahan, and the Third Declaration of William P. Densmore Jr. were not
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considered by the Examiner (Br. 67-69). The Appellants argue that the
Advisory Action of February 4, 2005 did not check box 8 or 9 stating the
Declaration was not entered (Br. 67-68, Reply Br. 7.)
In contrast, the Examiner states that the Declaration of David M.
Oliver, William P. Densmore, Jr. and Michael J. Callahan was not timely
presented (Ans. 26.) The Examiner notes that this Declaration was
submitted after the Final Office Action of Sept. 2, 2004, was mailed and that
it was not submitted with the request for continued examination (RCE)
under 37 CFR § 1.114 and that the box (1. b.ii) for Affidavits/Declarations
was not checked in that request (Ans. 26).
We have determined that it can not be ascertained that the Declaration
of David M. Oliver, William P. Densmore, Jr. and Michael J. Callahan was
ever officially entered into the case. While the Appellants are correct that
the Advisory Action of February 4, 2005 did not have box 8 or 9 indicating
that the Affidavit was not entered, it also did not have box 10 checked and
which therefore did not state that Declaration was officially entered. Thus,
to this point in the prosecution of the case, the Declaration cannot be deemed
to have been officially entered into the case since automatic entry after a
Final Rejection is not a matter of right. In the Applicants next response, a
Request for Continued Examination (RCE) Transmittal was filed on March
2, 2005 and the proper box for consideration of the Declaration (Box 1a. (i.
or ii) was not checked so there is no record that the cited Declaration was
ever officially entered into the file for consideration. Further, we see no
record of the Appellants addressing this Declaration whatsoever in the
subsequent responses of Oct. 6, 2005 or Nov. 23, 2006 before the Appeal
Brief was filed.
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With regard to the Third Declaration of William P. Densmore Jr. filed
October 6, 2005, the cited Declaration appears as admitted into the file
record, and was not denied entry. While the Examiner did not comment on
this Declaration, there is no evidence before us that this cited Declaration
was not considered by the Examiner. Our consideration of the Third
Declaration of William P. Densmore Jr. with regard to claims 35-62 is
similar to that addressed above and the Declaration fails to show that non-
enablement is present in Exhibit O here as well.
The Appellants have provided no separate arguments for claims 35-62
beyond merely reciting what the claims recite. Note that a statement that
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim. 37 C.F.R. § 41.37(o)(1) (2008.)
As the record before us does not show that the Declaration of David
M. Oliver, William P. Densmore, Jr. and Michael J. Callahan was officially
entered into the file or that the Third Declaration of William P. Densmore Jr.
was not considered by the Examiner, and since the Appellants have not
argued for any specific limitations present in the claim, the rejection of
claims 35-62 is sustained.

Claims 65 and 73
With regard to the rejection of claims the rejection of claims 65 and
73 under 35 U.S.C. § 103(a) as unpatentable over Clickshare Exhibit “O,”
Teper, and Clickshare Exhibit “L” provides arguments that have been
addressed above. For the same reasons given above, the rejection of these
claims is sustained.
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The Appellants have provided no separate arguments for limitations in
claims 65 and 73 beyond merely reciting what the claims recite. Note that a
statement that merely points out what a claim recites will not be considered
an argument for separate patentability of the claim. 37 C.F.R. § 41.37(o)(1)
(2008.)

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner
erred in rejecting claims 1-8, 11-25, 28-34, 63-64, 66-72, and 74-88 under
35 U.S.C. § 102(b) as anticipated by Clickshare Exhibit “O.”
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 9-10 and 26-27 under 35 U.S.C. § 103(a) as unpatentable
over Clickshare Exhibit “O” and Clickshare Exhibit “L.”
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 35-62 under 35 U.S.C. § 103(a) as unpatentable over
Clickshare Exhibit “O” and Teper.
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 65 and 73 under 35 U.S.C. § 103(a) as unpatentable over
Clickshare Exhibit “O,” Teper, and Clickshare Exhibit “L.”

DECISION
The Examiner’s rejection of claims 1-88 is sustained.

AFFIRMED

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JRG

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