Ex Parte Ge et al

Patent Trial and Appeal BoardSep 17, 2012

11427088 (P.T.A.B. Sep. 17, 2012)

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. 11/427,088 06/28/2006 Li Ge AUS920060353 US1 1942 7590 09/17/2012 J. B. Kraft 710 Colorado Street #5C Austin, TX 78701 EXAMINER BUI, JONATHAN A ART UNIT PAPER NUMBER 2448 MAIL DATE DELIVERY MODE 09/17/2012 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 LI GE, HUI JIANG, YU TANG, and PING WANG Appeal 2010-001670 Application 11/427,088 Technology Center 2400 ____________ Before LANCE LEONARD BARRY, JEAN R. HOMERE, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-001670 Application 11/427,088 2 Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 21-32. Claims 1-20 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Appellants’ invention is directed to a method and system for accessing portions of a large digital file preliminary to access the entire file. See Spec. 20, Abstract of the Disclosure. Claim 21 is illustrative, with key disputed limitations emphasized: 21. A computer controlled interactive display method for accessing a plurality of discrete portions of an entire digital audio file from a database comprising: displaying a first dialog menu enabling a user to interactively select a plurality of displayed representations of said discrete portions to be accessed from said database for a first fee for each accessed portion; tracking the total number of portions to be accessed from the database; predetermining a total number of portions less than the number of portions in the entire digital file; and displaying a second displayed dialog, responsive to determining that said predetermined number of portions has been selected by the user, for offering the entire digital audio file to said user at fee greater than the total fee for said predetermined number of portions. The Examiner relies on the following as evidence of unpatentability: Appeal 2010-001670 Application 11/427,088 3 Atsmon US Patent App. Pub. No.: US 2004/0031856 A1 Feb. 19, 2004 Cho US Patent App. Pub. No.: US 2004/0064374 A1 Apr. 1, 2004 Svendsen US Patent App. Pub. No.: 2007/0245376 A1 Oct. 18, 2007 (Filed Apr. 13, 2006) THE REJECTION The Examiner rejected claims 21-32 under 35 U.S.C. §103(a) as unpatentable over Svendsen, Atsmon and Cho. Ans. 4-7.1 ISSUE Based upon our review of the record, the arguments proffered by Appellants and the findings of the Examiner, we find the following issue to be dispositive of the claims on appeal: Under § 103, has the Examiner erred in rejecting claims 21-32 by finding that the combination of Svendsen, Atsmon and Cho, collectively, teaches or suggests enabling a user to ”interactively select a plurality of displayed representations of said discrete portions to be accessed from said database for a first fee for each accessed portion” and thereafter “displaying a second displayed dialog, responsive to determining that said predetermined number of portions has been selected by the user, for offering the entire digital audio file to said user at fee greater than the total fee for said predetermined number of portions” as set forth in independent claims 21, 25 and 29? 1 Throughout this opinion, we refer to the Appeal Brief filed September 17, 2009; the Examiner’s Answer mailed October 9, 2009; and, the Reply Brief filed November 17, 2009. Appeal 2010-001670 Application 11/427,088 4 ANALYSIS Appellants argue that the references cited by the Examiner, even if combined, fail to teach or suggest enabling a user to interactively select a plurality of displayed representations of said discrete portions to be accessed from said database for a first fee for each accessed portion, and thereafter displaying a second displayed dialog, responsive to determining that said predetermined number of portions has been selected by the user, for offering the entire digital audio file to said user at fee greater than the total fee for said predetermined number of portions. App. Br. 8, Reply Br. 2. The Examiner finds that Svendsen discloses permitting a user to access discrete portions of a presentation, by allowing a user to select and play previews. Ans. 5. The Examiner cites to Atsmon for disclosing the display of a dialog which offers an entire digital file for purchase. Id. at 5. Finally, the Examiner cites to Cho for disclosing the pricing of individual songs from an album, or a greater price for the entire album. Id. at 6. We find the Appellants’ arguments persuasive. Nothing within the cited references relied upon by the Examiner teaches or suggests the display of a second dialog “responsive to determining that said predetermined number of portions has been selected by the user” wherein the second dialog offers the entire digital file to the user at a fee greater than the total fee for the predetermined number of portions selected by the user, as set forth in each independent claim. The Examiner’s proposed combination does indeed disclose the display of a dialog box which offers the sale of an entire digital file; however,we find that the mere presence of a dialog box offering an entire digital file for sale (as in Atsmon) cannot be said to suggest the claimed display of a dialog box in response to a determination that the user Appeal 2010-001670 Application 11/427,088 5 has selected a predetermined number of portions of the entire digital file, as expressly claimed by Appellants. Because Appellants have shown at least one error in the Examiner’s rejection of claim 1, we need not address Appellants’ other arguments. Consequently, we find the Examiner erred in rejecting claims 21, 25 and 29 as unpatentable under § 103 over Svendsen, Atsmon and Cho, as well as claims 22-24, 26-28, and 30-32 which depend, either directly or indirectly, therefrom. CONCLUSION The Examiner erred in rejecting claims 21-32 under § 103. ORDER The Examiner’s decision rejecting claims is reversed. REVERSED Vsh