Ex Parte Dicke et al

Patent Trial and Appeal Board

Jan 24, 2017

13160974 (P.T.A.B. Jan. 24, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/160,974 06/15/2011 Ronald DICKE 417-04 US 4428
25319 7590
Shapiro Cohen LLP
P.O. Box 13002
Kanata, ON K2K 0E2
CANADA
EXAMINER
QAYYUM, ZESHAN
ART UNIT PAPER NUMBER
3685
MAIL DATE DELIVERY MODE
01/24/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD DICKE and GORDON FREEDMAN
Appeal 2015-0012971
Application 13/160,9742
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—6.3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“Br.,” filed June 17,
2014) and the Examiner’s Answer (“Ans.,” mailed September 3, 2014) and
Final Office Action (“Final Act.,” mailed December 19, 2013).
2 Appellants identify the inventors, Ronald Dicke and Gordon Freedman, as
the real parties in interest. Br. 3.
3 Claims 17—19 have been canceled. See Amendment After Final filed
March 19, 2014; Advisory Action mailed March 31, 2014.
Appeal 2015-001297
Application 13/160,974
CLAIMED INVENTION
Appellants’ claimed invention “relates generally to digital books or
e-books, and more particularly to a method and system for distributing
digital books” (Spec. 11).
Claim 1, reproduced below, is the sole independent claim, and
representative of the subject matter on appeal:
1. A method comprising:
in dependence upon purchasing a physical copy of a first
book, receiving a code comprising an identifier of the first book;
providing the code to an electronic device via an input
portion thereof;
establishing a communication session between the
electronic device and a digital bookstore via a communication
network;
transmitting the code from the electronic device to the
digital bookstore via the communication network during the
communication session;
in response to providing the code, receiving from the
digital bookstore via the communication network a digital book
copy of the first book; and,
storing the digital book copy of the first book on a storage
portion of the electronic device.
REJECTIONS
Claims 1,3,4, and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Van Zoest (US 6,609,105 B2, iss. Aug. 19, 2003) and
Dionne (US 2007/0043669 Al, pub. Feb. 22, 2007).
Claim 2 is rejected under 35 U.S.C. § 103(a) as unpatentable over Van
Zoest, Dionne, and Rempe (US 2008/0046374 Al, pub. Feb. 21, 2008).
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over Van
Zoest, Dionne, and Storey (US 2007/0250711 Al, pub. Oct. 25, 2007).
2
Appeal 2015-001297
Application 13/160,974
ANALYSIS
Independent Claim 1
We are not persuaded by Appellants’ arguments that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Van Zoest and Dionne (Br. 5—9). Instead, we agree with,
and adopt the Examiner’s findings and rationale as set forth at pages 9-13 of
the Answer. We add the following discussion for emphasis only.
By way of background, Van Zoest is directed to a system and method
for providing user access to electronic works over a network, and discloses
that in one embodiment, the user verifies that he/she is authorized to access
an electronic copy of the work by demonstrating that he/she possesses a
physical copy of the work (Van Zoest, Abstract; see also id. at col. 2,
11. 36-46; col. 5,11. 13—35). Van Zoest discloses that a user may
demonstrate ownership of a physical work in a variety of ways; for example,
the user may enter a confirmation number received with the purchase of the
physical work {id. at col, 11,11. 50-60).
Dionne is directed to a method for unlocking digital content embodied
in digital readable form on a digital media carrier, e.g., a CD, DVD, flash
memory card, etc. (Dionne, Abstract; see also id. at 124), and discloses that
in one embodiment, the locked digital content is a book or other printed
publication stored on a CD {id. at 125). The CD also includes digital media
unlocking software designed to unlock the digital content upon receipt of a
user input; the unlocking software requires that the user have physical
possession of the book {id. at || 24, 26—29).
In rejecting claim 1 under 35 U.S.C. § 103(a), the Examiner relies on
Van Zoest as discloses substantially all of the limitations of claim 1 except
3
Appeal 2015-001297
Application 13/160,974
the Examiner notes that Van Zoest does not explicitly disclose that the work
is a physical book (Final Act. 5). The Examiner cites Dionne to cure the
deficiency of Van Zoest (id.). And the Examiner concludes that claim 1
would have been obvious to a person of ordinary skill in the art at the time
of Appellants’ invention because the combination of Van Zoest and Dionne
only involves the simple substitution of one known element, i.e., the book of
Dionne, for another, i.e., the Van Zoest work, producing a predictable result
(id. at 5—6; see also Ans. 9—10).
Appellants argue that the Examiner has combined the Van Zoest and
Dionne references using impermissible hindsight to arrive at Appellants’
invention and that the Examiner has improperly relied on the disclosure of
the present application to find the motivation to combine the cited references
(Br. 5—7). Yet, as described above, the Examiner provided articulated
reasoning with some rational underpinning to support the obviousness
conclusion at pages 5—6 of the Final Office Action. The Examiner’s
rejection also appears clearly based on the disclosures of the Van Zoest and
Dionne references, and not on the disclosure of the present application.
Absent specific, technical arguments as to why the motivation is insufficient
or why the proposed combination is more than the simple substitution of one
known element for another, we find Appellants’ hindsight argument
unpersuasive.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 103(a).
4
Appeal 2015-001297
Application 13/160,974
Dependent Claim 2
Claim 2 depends from claim 1, and recites that “the code is imprinted
on a sales receipt for the physical copy of the first book.”
In rejecting claim 2 under § 103(a), the Examiner notes that the
combination of Van Zoest and Dionne does not explicitly disclose that “the
code is imprinted on a sales receipt for the physical copy of the first book,”
as recited in claim 2. The Examiner cites Rempe to cure this deficiency
(Final Act. 9 (citing Rempe 115)). However, the Examiner notes that the
phrase “wherein the code is imprinted on a sales receipt for the physical
copy of the first book,” as recited in claim 2, is non-functional descriptive
material, and may not be relied on to distinguish over the prior art for
purposes of patentability (id.). We agree.
The Federal Circuit has long held that where a limitation claims
printed matter that is not functionally or structurally related to its physical
substrate, the printed matter may not be relied on to distinguish over the
prior art for purposes of patentability. See, e.g., In re Gulack, 703 F.2d
1381, 1385 (Fed. Cir. 1983) (when descriptive material is not functionally
related to the substrate, the descriptive material will not distinguish the
invention from the prior art in terms of patentability). The rationale
underlying the “printed matter” cases also has been extended to the analysis
of the patentability of method claims. King Pharmaceuticals Inc. v. Eon
Labs, Inc., 616 F.3d 1267, 1278-79 (Fed. Cir. 2010) (applying the “printed
matter” reasoning to method claims containing an “informing” step that
could be either printed or verbal instructions).
Here, the relevant inquiry is whether the recitation in claim 2 that the
code is “imprinted on a sales receipt for the physical copy of the first book,”
5
Appeal 2015-001297
Application 13/160,974
rather than being provided in some other way, has a “new and unobvious
functional relationship” with the method. Id. at 1279. We agree with the
Examiner that it does not.
There is no objective evidence of record that there is a functional
distinction in providing a code to a purchaser of a physical copy of a book
by imprinting the code on the sale receipt for the book as opposed to
providing the code in another way. Regardless of the particular vehicle used
for communicating the code, the underlying method is the same. The nature
of the mechanism used to communicate the code does not depend on the
method, and the method does not depend on the nature of the mechanism
used to communicate the code. As such, it constitutes non-functional
descriptive material that may not be relied on for patentability. See In re
Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004).
In view of the foregoing, we sustain the Examiner’s rejection of
claim 2 under 35 U.S.C. § 103(a).
Dependent Claims 3—6
For much the same reasons outlined above with respect to claim 2, we
also are not persuaded that the Examiner erred in rejecting claims 3—6 under
35 U.S.C. § 103(a). Similar to claim 2, each of claims 3—6 recites features,
i.e., the nature and content of the claimed code and/or the input portion of
the claimed electronic device, that do not functionally affect how the
claimed method is performed.4 As such, the claims recite non-functional
4 Specifically, claims 3—6 recite that the input portion of the electronic
device comprises a keyboard (claim 3) or a scanner (claim 4) and the
claimed code comprise a string to alphanumeric characters (claim 3), a
machine-readable symbol (claim 4), an email confirmation including the
code (claims 5) or a single use code (claim 6).
6
Appeal 2015-001297
Application 13/160,974
descriptive material that may not be relied on to distinguish over the prior art
for purposes of patentability.
Therefore, we sustain the Examiner’s rejection of claims 3—6 under
35 U.S.C. § 103(a).
DECISION
The Examiner’s rejections of claims 1—6 under 35 U.S.C. § 103(a) are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
7