Ex Parte Stefik et alDownload PDFBoard of Patent Appeals and InterferencesFeb 14, 201110401755 (B.P.A.I. Feb. 14, 2011) Copy Citation 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 www uspto gov 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 Address REED SMITH LLP P.O. BOX 488 PITTSBURGH PA 15230 Copy with citationCopy as parenthetical citation