Ex Parte Patterson et al

Patent Trial and Appeal Board

Nov 1, 2016

13089154 (P.T.A.B. Nov. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/089, 154 04/18/2011
62296 7590 11/03/2016
Google/Fenwick
SILICON VALLEY CENTER
801 CALIFORNIA ST.
MOUNTAIN VIEW, CA 94041
FIRST NAMED INVENTOR
James Patterson
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.
24207-18639 9910
EXAMINER
ZIMMERMAN, MATTHEW E
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
11/03/2016 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):
ptoc@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES PATTERSON and NATHAN MOODY
Appeal2014-007385 1
Application 13/089,1542
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 8-12, 16, 23-27, 31, and 38--42. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
March 13, 2014) and Reply Brief ("Reply Br.," filed June 20, 2014), and the
Examiner's Answer ("Ans.," mailed May 6, 2014) and Final Office Action
("Final Act.," mailed October 17, 2013).
2 Appellants identify Google Inc. as the real party in interest. App. Br. 1.
Appeal2014-007385
Application 13/089,154
CLAIMED INVENTION
Appellants' claimed invention "relates to the field of electronic books
and, more particularly, to systems and methods for creating and distributing
customized books via electronic devices" (Spec. i-f 2).
Claims 1, 16, and 31 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative:
1. An electronic book system, comprising:
a memory storing computer executable instructions for:
a publisher processing subsystem configured to
permit publisher supply of book components and policies
corresponding to the book components, the book
components being stored in a book components database,
the policies being stored in a policy database;
a curator processing subsystem configured to permit
curator selection of a plurality of the book components
from the book components database, responsive to the
policies, for synthesis into an electronic book, the
synthesis including determining an umbrella policy, based
on a plurality of the policies applicable to the plurality of
the components, specifying a manner in which the
electronic book may be used, the curator processing
subsystem further configured to store the electronic book
in association with the umbrella policy in a book database;
and
a distribution subsystem configured to retrieve the
electronic book and the umbrella policy from the book
database and supply the electronic book to a reader subject
to the umbrella policy; and
one or more processors coupled to the memory for
executing the computer executable instructions.
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Appeal2014-007385
Application 13/089,154
REJECTIONS
Claims 1 and 8-12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hartman (US 7,007,034 Bl, iss. Feb. 28, 2006), Alger
(US 2005/0097007 Al, pub. May 5, 2005), and Nakahara
(US 2004/0162846 Al, pub. Aug. 19, 2004).
Claims 16, 23-27, 31, and 38--42 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hartman, Campagna (US 2009/0254802 Al,
pub. Oct. 8, 2009), and Nakahara.
ANALYSIS
Independent Claim 1 and Dependent Claims 8-12
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because Nakahara,
on which the Examiner relies, does not disclose or suggest "determining an
umbrella policy, based on a plurality of the policies applicable to the
plurality of the [book] components, specifying a manner in which the
electronic book may be used," as recited in claim 1 (App. Br. 6-8).
Nakahara is directed to a content use management system, and
discloses that the system comprises a terminal apparatus and a server
apparatus connected to the terminal apparatus through a communication
channel (Nakahara i-fi-f 10, 11). The terminal apparatus uses content, which is
a digital copyrighted work, and the server apparatus manages the use of that
content (id. i-f 11 ). Nakahara discloses that use conditions may specify the
number of available times that the content may be used and the time period
during which the content may be accessed (see, e.g., id. i-fi-1 87, 88, 100).
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Appeal2014-007385
Application 13/089,154
Citing paragraphs 88 and 100 of Nakahara, the Examiner maintains
that Nakahara meets the claim language because Nakahara applies a
plurality of use conditions to an entire body of content:
The [Nakahara] license applies a plurality of use conditions to
the entire body of content. For example, Nakahara teaches a first
use condition on the number of times an item of content can be
used and a second use condition on when the item of content may
be accessed (see [0088] and [0100]). The combination of these
plural use conditions (policies) together forms the license
(umbrella policy) for the content.
Ans. 4. 3 Yet, as Appellants correctly observe, the cited portions ofNakahara
merely disclose that a license can include multiple conditions, i.e., "the
number of available times for the content to be used ... [and] a validity
period of a targeted content" (Reply Br. 2 (quoting Nakahara i-f 88)). The
plural conditions apply to the entirety of the content to which they
correspond, and the resulting license also corresponds to the entirety of that
content. There is nothing in the cited portions of Nakahara that discloses or
suggests that a particular use condition applies only to a particular portion,
i.e., a component, of the content and, therefore, nothing that discloses or
suggests determining an umbrella policy for an electronic book based on
policies that correspond to individual book components, i.e., "determining
an umbrella policy, based on a plurality of the policies applicable to the
plurality of the [book] components, specifying a manner in which the
electronic book may be used," as recited in claim 1.
3 We note, as do Appellants (see Reply Br. 2, n.1 ), that every page of the
Examiner's Answer is labelled "page 1." Like Appellants, we refer to the
title page immediately following Form PTOL-90A as page 1, and treat the
pages that follow as though consecutively numbered.
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Appeal2014-007385
Application 13/089,154
In view of the foregoing, we do not sustain the Examiner's rejection
of claim 1 under 35 U.S.C. § 103(a). For the same reasons, we also do not
sustain the Examiner's rejection of dependent claims 8-12. Cf In re Fritch,
972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if
the independent claims from which they depend are nonobvious").
Independent Claims 16 and 31 and Dependent Claims 23-27 and 38-42
Independent claims 16 and 31 include language substantially similar
to the language of claim 1 and stand rejected based on same erroneous
findings with respect to Nakahara applied in rejecting claim 1 (Final Act. 6-
7, 9). Therefore, we do not sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of independent claims 16 and 31, and claims 23-27 and 38--42,
which depend therefrom, for the same reasons set forth above with respect to
claim 1.
DECISION
The Examiner's rejections of claims 1, 8-12, 16, 23-27, 31, and 38-
42 under 35 U.S.C. § 103(a) are reversed.
REVERSED
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