Ex Parte Stefik et al

Board of Patent Appeals and Interferences

Feb 14, 2011

10401755 (B.P.A.I. Feb. 14, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P Alexandria, 0 Box 1450 Virginia 22313- 1450
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98804 7590 02/16/2011
Reed Smith LLP
APPLICATION NO.
EXAMINER
P.O. Box 488 AUGUSTIN, EVENS J
101401,755 0313 112003 Mark J. Stefik 10-510-US-C10 5989
(cg023000)
FILING DATE
Pittsburgh, PA 15230 I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
ATTORNEY DOCKET NO.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
CONFIRMATION NO.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
0211 61201 1 ELECTRONIC
ptoipinbox @reedsmith.com
mskaufman @reedsmith.com
PTOL-90A (Rev. 04107)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Exparte MARK J . STEFIK and
PETER L. T. PIROLLI
Appeal 2009-014891
Application 10140 1,755
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 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 2009-014891
Application 10140 1,755
Mark J. Stefik and Peter L. T. Pirolli (Appellants) seek review under
35 U.S.C. 5 134 (2002) of a final rejection of claims 120-175, the only
claims pending in the application on appeal. We have jurisdiction over the
appeal pursuant to 35 U.S.C. 5 6(b) (2002).
The Appellants invented a way of controlling the distribution and use of
digital works using digital tickets (Specification 8:Summary of the
Invention). An understanding of the invention can be derived from a
reading of exemplary claim 120, which is reproduced below [bracketed
matter and some paragraphing added].
120. In a computer system, a method for configuring software
for a client computer having an existing computer program part,
said client computer being coupled to at least one server, said
method comprising:
[I] transmitting a request for a first computer program part from
the client computer to a server,
the request specifying a first particular manner of use,
the first computer program having first usage rights
associated therewith.
the first usage rights specifying said first particular
manner of use for the first computer program part;
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed December 5, 2008) and Reply Brief ("Reply Br.," filed May 26,
2009), and the Examiner's Answer ("Ans.," mailed March 24, 2009).
Appeal 2009-014891
Application 10140 1,755
[2] authorizing the client computer for the first computer
program part
in accordance with the first usage rights;
[3] transmitting
the first computer program part and
new usage rights
to the client computer
in response to said request;
[4] creating a new computer program for execution
by combining
the first computer program part and
the existing computer program part; and
[5] executing the new computer program
in accordance with said new usage rights
specifying a second particular manner of use for
the new computer program.
The Examiner relies upon the following prior art:
Chaum US 4,529,870 Jul. 16, 1985
Wyman US 5,260,999 Nov. 9,1993
Claims 120- 139, 14 1- 167, and 170- 175 stand rejected under 35 U.S.C.
5 102(b) as anticipated by Wyman.
Claims 140, 141, 168, and 169 stand rejected under 35 U.S.C. 5 103(a)
as unpatentable over Wyman.
Claims 134 and 162 stand rejected under 35 U.S.C. 5 103(a) as
unpatentable over Wyman and Chaum.
Appeal 2009-014891
Application 10140 1,755
ISSUES
The issues of novelty and obviousness turn on whether Wyman
describes combining a program part that had been transmitted to a computer
with an existing program part.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art - Wyrnan
01. Wyman is directed to managing the licensing of software
executed in computer systems. Wyman 1 :23-26.
02. The Examiner made no findings as to whether Wyman
describes combining a program part that had been transmitted to a
computer with an existing program part.
ANALYSIS
Claims 120-139, 141 -167, and 170-1 75 rejected under 35 U.S. C. § 102(b) as
anticipated by Wyrnan.
We agree with the Appellants (Appeal Br. 6-7; Reply Br. 2-3) that the
Examiner made no findings as to whether Wyman describes combining a
Appeal 2009-014891
Application 10140 1,755
program part that had been transmitted to a computer with an existing
program part, as required to anticipate limitations [3] and [4]. See FF 02.
Clairns 140, 141, 168, and 169 rejected under 35 U.S.C. § 103(a) as
unpatentable over Wyrnan.
Clairns 134 and 162 rejected under 35 U.S. C. § 103(a) as unpatentable over
Wyrnan and Chaurn.
Chaum fails to make up for the deficiency of Wyman and the Examiner
made no findings regarding the predictability of combining a transmitted
program part with an existing program part.
CONCLUSIONS OF LAW
Rejecting claims 120-139, 141-167, and 170-175 under 35 U.S.C.
5 102(b) as anticipated by Wyman is in error.
Rejecting claims 140, 141, 168, and 169 under 35 U.S.C. 5 103(a) as
unpatentable over Wyman is in error.
Rejecting claims 134 and 162 under 35 U.S.C. 5 103(a) as unpatentable
over Wyman and Chaum is in error.
DECISION
To summarize, our decision is as follows.
Appeal 2009-014891
Application 10140 1,755
The rejection of claims 120-139, 141-167, and 170-175 under 35
U.S.C. 5 102(b) as anticipated by Wyman is not sustained.
The rejection of claims 140, 141, 168, and 169 under 35 U.S.C.
5 103(a) as unpatentable over Wyman is not sustained.
The rejection of claims 134 and 162 under 35 U.S.C. 5 103(a) as
unpatentable over Wyman and Chaum is not sustained.
REVERSED
mev
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