Ex Parte Rhoads

Board of Patent Appeals and Interferences

Nov 26, 2003

09545174 (B.P.A.I. Nov. 26, 2003)

1
The opinion in support of the decision being entered
today was not written for publication and is
not binding precedent of the Board
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte GEOFFREY B. RHOADS
______________
Appeal No. 2002-0012
Application 09/545,174
_______________
ON BRIEF
_______________
Before THOMAS, HAIRSTON, and LEVY, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.

ON REQUEST FOR REHEARING
In a paper bearing a Certificate of Mailing of September 30,
2003, appellant requests that we rehear our decision mailed on
July 31, 2003, in which we affirmed the examiner's rejection of
claims 1-16 under 35 U.S.C. § 103. Inasmuch as we agree with
some of the positions set forth by appellant in the Request for
Rehearing, our original decision to affirm the examiner's
rejection of the claims under 35 U.S.C. § 103 is hereby changed,
such that now we reverse that rejection.
Appeal No. 2002-0012
Application 09/545,174
2
The substance of each independent claim 1, 2, 3 and 16 on
appeal requires in part that a first computer or subsystem store
data representing "a plurality of creator identifiers and creator
contact data corresponding to each of the creator identifiers" as
set forth in claim 1. The end of each claim requires that a
network communicate an otherwise recited revealed creator
identifier from a second computer or subsystem "to said first
computer to obtain the creator contact data corresponding to the
one of the plurality of creator identifiers from said first
memory" as set forth in claim 1. It is the interaction of these
features recited in some manner in each of the independent claims
on appeal that leads us to presently conclude that the examiner's
original rejection within 35 U.S.C. § 103 must be reversed.
A review of pages 6-9 of our original opinion leads us to
conclude that we initially set forth an incomplete consideration
of all the features of the independent claims on appeal and of
the resulting combination of the teachings and suggestions of
Shear in view of Powell. Although we remain of the view that the
two references are properly combinable within 35 U.S.C. § 103, it
is our present view now that the claimed invention would not have
resulted.
Appeal No. 2002-0012
Application 09/545,174
3
By the use of the index information, which may be encrypted
or un-encrypted, the data stored on the storage medium 100 in
Figures 1 and 2 of Shear is read by the host computer 200 in its
encrypted form. Then it is sent to the decoder/biller 300 from
which it is decoded and sent back to the host computer 200. This
is shown generally in Figures 1-4 and discussed at column 4, line
66 through column 5, line 17; column 11, lines 24-38; column 14,
lines 3-11; column 14, line 40 through column 15, line 2; column
16, lines 14-68; and column 20, lines 8-10. The discussion of
the alternate embodiment in Figure 5 begins at column 20, line
33.
We are therefore persuaded by appellant's reasoning set
forth at pages 3-6 of the Request for Rehearing. Although we
remain of the view that the decrypted data sent from the
decoder/biller 300 back to the host computer 200 would implicitly
include creator contact data, the requirements of the independent
claims on appeal require more. The claimed first memory recites
a correspondence between the creator identifiers and creator
contact data. The examiner's correlation of the storage medium
100 as containing the creator identifier data that must be
decrypted by the second computer 300 in the manner generally set
forth by the claims on appeal in the form of reading a watermark
Appeal No. 2002-0012
Application 09/545,174
4
in the data is an incomplete view of the claimed requirements.
The information sent back to the host computer 200 from the
decoder/biller 300 does not access again the storage medium 100
in Figures 1 and 2 to derive any corresponding creator contact
data therefrom in the manner required by the claims on appeal.
In fact, the storage medium 100 is not again accessed by the host
computer 200 once it has received the decrypted information from
the decoder/biller 300.
Again, it is emphasized that the independent claims on
appeal require that the creator contact data corresponding to one
of a plurality of creator identifiers must be obtained from the
first memory. The resulting combination of Shear in view of
Powell does not teach this feature. As noted earlier, we thus
conclude that the subject matter of the independent claims on
appeal would not have resulted from the combination of teachings
and suggestions of Shear in view of Powell.
In view of the foregoing, since we are persuaded by at least
some of the arguments presented by appellant in the Request for
Rehearing, our decision originally set forth in our prior opinion
Appeal No. 2002-0012
Application 09/545,174
5
affirming the rejection of all claims on appeal under 35 U.S.C.
§ 103 is hereby changed, such that we now reverse that rejection.
As such, appellant's Request for Rehearing is Granted.
GRANTED
James D. Thomas )
Administrative Patent Judge )
)
)
)
Kenneth W. Hairston ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Stuart S. Levy )
Administrative Patent Judge )

JDT/cam
Appeal No. 2002-0012
Application 09/545,174
6
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