Ex Parte Stefik et al

Patent Trial and Appeal Board

Nov 27, 2017

11401926 (P.T.A.B. Nov. 27, 2017)

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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/401,926 04/12/2006 Mark J. Stefik 10-510-US-C42 6182
128144 7590 11/29/2017 EXAMINER
Rimon P C
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11/29/2017 ELECTRONIC
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK J. STEFIK and PETER L.T. PIROLLI
Appeal 2016-000255
Application 11/401,926
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
MICHAEL W. KIM, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Mark J. Stefik and Peter L.T. Pirolli (Appellants) seek review under
35U.S.C. § 134 of a final rejection of claims 55—58 and 80-103. App. Br.
4; Ans. 3. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellants invented a system for controlling the distribution and use
of digital works using digital tickets. Specification para. 16.
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed November 17, 2014) and Reply Brief (“Reply Br.,” filed
Appeal 2016-000255
Application 11/401,926
An understanding of the invention can be derived from a reading of
exemplary claim 55, which is reproduced below (bracketed matter and some
paragraphing added).
55. A computer system comprising computer readable media
for establishing and utilizing a secure communication channel
between repositories for conducting a usage transaction of a
digital work, said computer readable media having encoded
thereon:
[1] an identification certificate of a repository certified by a
master repository;
[2] an external interface of said repository programmed to
establish the secure communication channel using a session
initiation transaction protocol, the session initiation transaction
protocol including :
[3] receiving, at another repository, a registration message, the
registration message including the identification certificate of
said repository and a registration identifier, validating, at the
another repository, the authenticity of said repository by
verifying the identification certificate, generating a message to
test the authenticity of said repository, sending the generated
message to said repository, and verifying if said repository
correctly processed the generated message, and exchanging
messages including at least one session key between said
repository and the another repository, wherein the session key
is to be used in communications during a session between said
repository and the another repository, said external interface
also being programmed to conduct a secure transaction with the
another repository, including receiving the digital work;
and
[4] a processor programmed to conduct the usage transaction,
wherein the usage transaction comprises controlling use of the
September 30, 2015), and the Examiner’s Answer (“Ans.,” mailed August 3,
2015), and Final Action (“Final Act.,” mailed March 21, 2014).
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Appeal 2016-000255
Application 11/401,926
digital work in accordance with usage rights associated with the
digital work.
The Examiner relies upon the following prior art:
Stefik US 7,043,453 B2 May 9, 2006
Claims 55—58 and 80-103 stand rejected under the judicially created
doctrine of obviousness type double patenting as claiming the patentably
indistinguishable subject matter as another U.S. Patent.
ISSUES
The issues of obviousness type double patenting turn primarily on
whether the Examiner makes findings showing the claims between the
instant application and Stefik ‘453 are patentably indistinct.
ANALYSIS
We are persuaded by Appellants’ argument that the Examiner has failed
to meet his burden when making the non-statutory obviousness—type double
patenting rejection. App. Br. 12.
Claims 55—58 and 80-103 stand rejected under the judicially created
doctrine of obviousness type double patenting as claiming the patentably
indistinguishable subject matter as another U.S. Patent. The Examiner never
made findings as to which claim in the instant application is patently
indistinguishable from which claim in Stefik ’453, much less how the one is
indistinguishable over the other. Appellants are left to speculate, and the
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Appeal 2016-000255
Application 11/401,926
Examiner responds only to the results of the speculation, rather than making
the requisite findings.
For example, Appellants argued differences between instant claim 55
and claims 1 and 30 in Stefik ’453. The Examiner does not find this to be an
improper comparison, but responds only to the speculation regarding claim
30 in Stefik ’453 as to what the Examiner might be basing his conclusion on.
The Examiner makes no response to the arguments as to claim 1. Our
analysis from comparison between these claims shows they are distinct.
First, claim 30 in Stefik ’453 is drafted as means plus function, and no
findings of the underlying structure from the Specification is made. Instant
claim 55 is drafted as a method performed by computer readable
instructions, so the steps in claim 55 must be shown to be patentably
indistinguishable from what the structure in the Specification of Stefik ’453
would perform. No such findings are presented.
Second, claim 55 recites an identification certificate of a repository
certified by a master repository, whereas claim 30 recites an identification
certificate, and an identifier of a master repository that encrypted the
identification certificate. Third, claim 55 recites an external interface of said
repository programmed to establish the secure communication channel, for
which claim 30 has no corresponding structure.
The above distinctions between claim 55 and Stefik ’453 claim 30 are
also found, aside from the means plus function usage, in a comparison
between claim 82 and Stefik ‘453 claim 30, and between claim 88 and Stefik
‘453 claim 30, and between claim 96 and Stefik ‘453 claim 30. Numerous
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Appeal 2016-000255
Application 11/401,926
other distinctions are also found, but this serves to show that a proper case of
non-statutory obviousness—type double patenting has not been made.
CONCLUSIONS OF LAW
The rejection of claims 55—58 and 80—103 under the judicially created
doctrine of obviousness type double patenting as claiming the patentably
indistinguishable subject matter as another U.S. Patent is improper.
DECISION
The rejection of claims 55—58 and 80—103 is reversed.
REVERSED
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