Ex Parte Yodo

Board of Patent Appeals and Interferences

Jul 12, 2010

09923618 (B.P.A.I. Jul. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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530 7590 07/12/2010
LERNER, DAVID, LITTENBERG,
KRUMHOLZ & MENTLIK
600 SOUTH AVENUE WEST
WESTFIELD, NJ 07090
APPLICATION NO.
I EXAMINER I
THEW, MARIA TERESA 'I
091923,618 08/07/2001 Fumitake Yodo SONYJP 3.3-1245 DIV I1 1742
FILING DATE
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
MAIL DATE
The time period for reply, if any, is set in the attached communication.
ATTORNEY DOCKET NO.
DELIVERY MODE
PTOL-90A (Rev. 04/07)
CONFIRMATION NO.
07/12/2010 PAPER
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte FUMITAKE YODO
Appeal 2009-01 1128
Application 091923,618
Technology Center 3600
Decided: July 12, 20 10
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
22 DECISION ON APPEAL
Appeal 2009-01 1128
Application 09/923,6 18
STATEMENT OF THE CASE
Fumitake Yodo (Appellant) seeks review under 35 U.S.C. 5 134 (2002)
of a final rejection of claim 11, the only claim pending in the application on
appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. 5 6(b)
(2002).
We REVERSE.
THE INVENTION
The Appellant invented an accounting system that can communicate
with the accounting center (Specification 1:Technical Field).
An understanding of the invention can be derived from a reading of the
sole remaining claim 1, which is reproduced below [bracketed matter and
some paragraphing added].
11. A data processing method in an accounting system
including an accounting center and a terminal device
communicating with the accounting center, the method
comprising the steps of:
[I] storing accounting points in a first memory of the terminal
device;
1 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed May 8, 2007) and Reply Brief ("Reply Br.," filed October 29,
2007), and the Examiner's Answer ("Ans.," mailed August 29, 2007).
Appeal 2009-01 1128
Application 09/923,6 18
[2] storing distributed information distributed from an external
source and attributes corresponding to the distributed
information in a second memory of the terminal device and
setting the attributes to an unavailable state;
[3] updating the accounting points stored in the first memory of
the terminal device and updating the attributes of the distributed
information from the unavailable state to an available state
when the accounting points are updated correctly based on the
distributed information;
[4] transmitting the accounting points stored in the first memory
of the terminal device to the accounting center;
[5] carrying out an accounting processing in the accounting
center based on the accounting points transmitted from the
terminal device, and
[6] restoring the accounting points in the first memory to an
initial value after receiving a notification from the accounting
center indicating that the accounting processing has ended
normally.
THE REJECTIONS
The Examiner relies upon the following prior art:
Peterson US 5,857,020 Jan. 5, 1999
Claim 1 1 stands rejected under 35 U.S.C. 5 102(e) as anticipated by
Peterson, and alternatively, under 35 U.S.C. 5 103(a) as unpatentable over
Peterson.
ARGUMENTS
The Appellant argues there is no transmission of the accounting points
from the terminal device to the accounting center and no accounting process
carried out in the accounting center based on the accounting points
transmitted from the terminal device to the accounting center. Appeal Br. 3-
Appeal 2009-01 1128
Application 09/923,6 18
ISSUES
The issue of whether the Examiner erred in rejecting claim 11 under 35
U.S.C. 5 102(e) as anticipated by Peterson or alternatively under 35 U.S.C.
5 103(a) as unpatentable over Peterson turns on whether Peterson describes
transmission of the accounting points from the terminal device to the
accounting center and an accounting process carried out in the accounting
center based on the accounting points transmitted from the terminal device
to the accounting center as in limitations [4] and [5].
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 - Peterson
01. Peterson is directed to controlling access by a user to encrypted
data content by defining a time period during which the data is
decrypted. Peterson 2:23-3 1.
02. Peterson describes online communication with a server at an
authorization center. A terminal transmits an authorization request
message, including the identifier of a movie to be viewed and the
identifier of the consumer to the server. The server uses this data
to retrieve the corresponding movie control record and consumer
account record stored in its database. The server applies the
amount specified for cost of usage in the control record against the
consumer's account and where sufficient funds or credits are
present, subsequently generates an authorization granted message
Appeal 2009-01 1128
Application 09/923,6 18
that indicates: the identifier of the secured content to which access
is now authorized; the start date and time at which access to the
secured content (i. e., unlocking) may be enabled; the expiration
date and time after which authorization lapses; and the usage limit.
Peterson 8:4-23.
03. Peterson describes each consumer purchasing the right to view
the movie once for a certain fee, for example $5.00, through
online access to an authorization center. Thereafter, the consumer
pays for viewing of the movie either on a pay-per-use basis or
over a defined window of time, and perhaps for reduced fee such
as $1.00. Peterson 2:62-3:l. Peterson does not describe how such
payments are implemented and in particular makes no mention of
whether any accounting data is sent from a terminal to the server
when payment is made.
04. Peterson also describes another embodiment in which a prepaid
card is programmed to maintain an amount of funds prepaid by the
consumer, a list of authorized access records and a decryption key.
The amount of prepaid funds may be adjusted in return for
receiving monetary compensation and the particular decryption
key updated periodically, for instance, by an authorization center
which the consumer may visit for manual updating of these values
or through an automatic online process. Peterson 9:44-53.
ANALYSIS
Claim 11 has six steps. The first three steps start with some information
that is altered in a terminal. Step 4 transmits some accounting information
Appeal 2009-01 1128
Application 09/923,6 18
to an accounting center where step 5 processes the accounting information.
Step six resets information in the terminal. Peterson describes a terminal
device in which a user contacts an online server for authorization to view or
listen to content encrypted within the terminal. The Examiner found this
online processing to meet limitation [5]. Separately, Peterson describes
purchasing the right to view the movie once for a certain fee through online
access to an authorization center. The Examiner found this online
processing to meet limitation [4]. Ans. 3-4. The Appellant argues the
transmission includes no accounting points and this process carries out no
accounting. Appeal Br. 5-6.
The Examiner responds by citing to yet a different portion of Peterson
describing funding a prepaid card. The Examiner found that this recitation
in Peterson described adjusting funds and that if the adjusting occurs at the
accounting center, the remaining fund amount must be transmitted so the
remaining funds may be aggregated with the added funds, and the
accounting must occur at the server. Ans. 5-6. To this finding, the
Appellant responds that the claim requires that the accounting points are the
same points throughout the claim, not two disparate sets of information in a
funding transaction and a separate rental transaction. Reply Br. 2-3.
Here we agree with the Appellant that the Examiner has not shown that
the two transactions in the Examiner's findings would be transmitted and
processed in the same transmission and process. The accounting points,
transmitted in limitation [4], are those points that were initially stored in step
[I] and updated in step [3] at the same time that the distributed information
had its status changed from unavailable to available. In the transaction that
would correspond to this state change in Peterson, the only data sent to the
Appeal 2009-01 1128
Application 09/923,6 18
server is the content ID and the customer ID. FF 02. While Peterson may
transmit accounting information to the server when a prepaid card is funded
(FF 04), Peterson does not describe the actual implementation (FF 03) so
such a transmission of accounting points that were updated when the content
status changed is not inherent. Accordingly, the Examiner's finding of
anticipation is in error.
The Examiner's alternative rejection over obviousness is predicated on
an alternative construction of the initial value. Ans. 5. As the initial value
in limitation [6] is not at issue, the Examiner's alternative construction does
not remedy the error in the Examiner's prima facie case.
CONCLUSIONS OF LAW
The Examiner did err in rejecting claim 1 1 under 35 U.S.C. 5 102(e) as
anticipated by Peterson.
The Examiner did err in rejecting claim 1 1 under 35 U.S.C. 5 103(a) as
unpatentable over Peterson.
DECISION
To summarize, our decision is as follows.
The rejection of claim 11 under 35 U.S.C. 5 102(e) as anticipated by
Peterson is not sustained.
The rejection of claim 11 under 35 U.S.C. 5 103(a) as unpatentable
over Peterson is not sustained.
Appeal 2009-01 1128
Application 09/923,6 18
REVERSED
mev
Address
LERNER, DAVID, LITTENBERG,
KRUMHOLZ & MENTLIK
600 SOUTH AVENUE WEST
WESTFIELD NJ 07090