Ex Parte Frazier et al

Patent Trial and Appeal Board

Sep 26, 2014

11809974 (P.T.A.B. Sep. 26, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MILTON MASSEY FRAZIER, JASON R. MEERBERGEN,
GEN TSUCHIKAWA, and EDGAR ALLAN TU
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Appeal 2012-003250
Application 11/809,9741
Technology Center 3600
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellants identify the real parties in interest as Sony Corp. and Sony
Electronics, Inc. (App. Br. 2).
Appeal 2012-003250
Application 11/809,974

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 2, 4–12, 15, 16 and 20. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

BACKGROUND
Appellants’ invention is directed to systems and methods for
transferring digital media and more particularly, for promoting the sale of
digital media.
Claim 1 is illustrative:
1. A method comprising:
selling content from an original sales entity (OSE) to a
first affiliate sales entity (ASE);
permitting the first ASE to transfer the content to a
second ASE such that the second ASE receives the content
from the first ASE in a transaction;
synchronizing the second ASE with a system database to
exchange ledger information therebetween; and
using the ledger information to credit a first portion of a
sales amount to the first ASE and a second portion of the sales
amount to the OSE, wherein the OSE is associated with a seller
unique identification (SUID) and a token including an
encrypted version of the SUID is conveyed with the content,
and the first and second ASEs must successfully decrypt the
SUID and compare it against a list of authorized SUIDs to
verify that the SUID is on the list prior consummating the
transaction.
Appeal 2012-003250
Application 11/809,974

3
The Examiner relies on the following prior art references as evidence
of unpatentability:
Sims
Chang
Harper
US 6,550,011 B1
US 2003/0125964 A1
US 2006/0190410 A1
Apr. 15, 2003
Jul. 3, 2003
Aug. 24, 2006

Appellants appeal the following rejections:
Claims 1, 2, 4–7 and 20 under 35 U.S.C. § 103(a) as unpatentable
over Chang, Harper, and Sims.
Claims 8–12, 15 and 16 under 35 U.S.C. § 103(a) as unpatentable
over Chang and Harper.

ISSUE
Did the Examiner err in rejecting claim 1 because Sims does not
disclose that the second affiliate sales entity decrypts the seller unique
identification and compares it to a list of authorized seller unique
identifications?
Did the Examiner err in rejecting claim 8 because Chang does not
disclose that the second content is transferred in a cost-free transaction?

ANALYSIS
Claim 1

The Appellants argue that Chang does not disclose that the second
affiliate sales entity decrypts the seller unique identification and compares it
against a list of authorized seller unique identifications. It is unclear from a
Appeal 2012-003250
Application 11/809,974

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reading of the statement of rejection in the Answer what the Examiner is
relying on to teach this subject matter. The Examiner does find that Sims
teaches decrypting content key information and comparing uses proscribed
therein with the proposed use of the content. However, the Examiner does
not explain how the comparing of uses proscribed for content is a teaching
of comparing a seller unique identification to a list of authorized seller
unique identifications. Even in the statement of why the subject matter
would have been obvious, the Examiner states that it would have been
obvious to modify the invention of Chang to compare authorized uses of
content to appropriately compensate the provider. However, the claim does
not recite comparing authorized uses of content but rather comparing seller
identifications to a list of authorized seller identifications. As such, the
Examiner has failed to establish a prima facie case of obviousness against
claim 1 and claims 2, 4, 5, 6, 7, and 20 dependent therefrom.
Claim 8

We are not persuaded of error on the part of the Examiner in rejecting
claim 8 by Appellants’ arguments that Chang does not disclose second
content transferred in a cost-free transaction. According to Appellants, the
watermark that is transferred during a transaction is a payment tracking
watermark.
We find that Chang discloses that the watermark is used for
authenticating the content. Chang, para. 32. This watermark is sent along
with preview files so that the history of the preview file is stored by the
watermark. We agree with the Examiner that the disclosure of transferring a
preview file is a disclosure of transferring content in a cost-free transaction.
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Application 11/809,974

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In fact, Chang discloses that the products associated with a preview file can
be purchased or not purchased. Chang, para. 66. As we disagree with the
Appellants that the Chang watermark is a payment tracking watermark, and
we agree with the Examiner that Chang discloses transferring content in a
cost-free transaction, we will sustain the Examiner’s rejection of claim 8.
We will also sustain the Examiner’s rejection of claims 9–12, 15 and 16
because the Appellants have not argued the separate patentability of these
claims.

DECISION
We do not affirm the Examiner’s § 103(a) rejections of claims 1, 2, 4–
7 and 20.
We affirm the Examiner’s § 103(a) rejection of claims 8–12, 15 and
16.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1) (2009).

ORDER
AFFIRMED-IN-PART

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