Ex Parte Mithal et al

Patent Trials and Appeals BoardJun 5, 2019

12497687 - (D) (P.T.A.B. Jun. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/497,687 07/05/2009 22242 7590 06/06/2019 FITCH EVEN TABIN & FLANNERY, LLP 120 SOUTH LASALLE STREET SUITE 2100 CHICAGO, IL 60603-3406 FIRST NAMED INVENTOR Ashish K Mithal 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 102164 7020 EXAMINER MPAMUGO, CHINYERE ART UNIT PAPER NUMBER 3621 MAIL DATE DELIVERY MODE 06/06/2019 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 ASHISH K. MITHAL and AMAD TA YEBI Appeal2018-004501 Application 12/497,687 Technology Center 3600 Before KARA L. SZPONDOWSKI, SCOTT B. HOW ARD, and STEVEN M. AMUNDSON, Administrative Patent Judges. AMUNDSON, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. Â§ 134(a) from a final rejection of claims 15, 20-22, 31, 32, 38-44, 48, and 49, i.e., all pending claims. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 Appellants identify the real party in interest as Nytell Software LLC. App. Br. 3. Appeal2018-004501 Application 12/497,687 STATEMENT OF THE CASE The Invention According to the Specification, the invention concerns "distribution and/or sale of digital works or information products." Spec. ,-J 2.2 Exemplary Claim Independent claim 15 exemplifies the claims at issue and reads as follows: 15. A method comprising: receiving a request regarding an information product from a user device over a computer network; generating a preview version of the information product in accordance with customer-specified relevance criteria received from the user device; selecting a masking effect from a plurality of masking effects based on the information product and customer preview preferences; superposing the masking effect on the preview version of the information product by placing or laying the masking effect over or above the preview version to create a masked version of the preview version of the information product; providing the user device access to the masked version of the preview version of the information product, over the computer network, prior to purchase of the information product, in accordance with the request; offering the preview version of the information product for sale with a purchase price based on the customer-specified relevance criteria. 2 This decision uses the following abbreviations: "Spec." for the Specification, filed July 5, 2009; "Final Act." for the Final Office Action, mailed June 9, 2017; "App. Br." for the Appeal Brief, filed Oct. 5, 2017; "Ans." for the Examiner's Answer, mailed Jan. 25, 2018; and "Reply Br." for the Reply Brief, filed Mar. 26, 2018. 2 Appeal2018-004501 Application 12/497,687 App. Br. 15 (Claims App.). The Prior Art Supporting the Rejection on Appeal As evidence ofunpatentability under 35 U.S.C. Â§ 103(a), the Examiner relies on the following prior art: Hendricks et al. ("Hendricks") Brandt US 2012/0179962 Al EP 1018833 A2 The Rejection on Appeal July 12, 20123 July 12, 2000 Claims 15, 20-22, 31, 32, 38-44, 48, and 49 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Brandt and Hendricks. Final Act. 3. ANALYSIS We have reviewed the rejection of claims 15, 20-22, 31, 32, 38-44, 48, and 49 in light of Appellants' arguments that the Examiner erred. Based on the record before us and for the reasons explained below, we concur with Appellants' contentions that the Examiner erred in finding that the cited portions of Brandt and Hendricks teach or suggest offering a preview version of an information product "for sale with a purchase price based on the customer-specified relevance criteria" as recited in each independent claim. TheÂ§ 103(a) Rejection of Claims 15, 20---22, 31, 32, 38-44, 48, and 49 INDEPENDENT CLAIMS 15 AND 38 As noted above, theÂ§ 103(a) rejection of independent claims 15 and 38 rests on Brandt and Hendricks. See Final Act. 3-4. Appellants argue that the Examiner erred in rejecting claims 15 and 38 because the combination of Brandt and Hendricks does not teach or suggest the following limitation in 3 Hendricks has an effective filing date of June 25, 1999. 3 Appeal2018-004501 Application 12/497,687 each claim: "offering the preview version of the information product for sale with a purchase price based on the customer-specified relevance criteria." See App. Br. 8-10; Reply Br. 2. Specifically, Appellants assert that Brandt "completely fails to disclose basing the purchase price of the preview version on the customer- specified relevance criteria." App. Br. 9. Appellants also assert that Brandt "does not disclose selling or receiving payment for the sample" because Brandt's sample "provide[s] to a potential customer ... potential purchase evaluation." Id. at 8. According to Appellants, Brandt "merely discloses a single, specified fee" and "does not disclose 'a purchase price based on the customer-specified relevance criteria."' Reply Br. 2. The Examiner finds that Brandt teaches "providing a preview version prior to receiving payment." Ans. 3 ( citing Brandt ,i 1 O); see Final Act. 4 (citing Brandt ,i,i 10-13). The Examiner reasons that Brandt's disclosure that a customer inspects a specific section of an image combined with the customer paying a specified fee teaches that the fee depends on the type of "image or content the customer needs." Ans. 3-4 (citing Brandt ,i,i 10-11). Based on the record before us, we agree with Appellants that the Examiner has not adequately explained how the cited portions of Brandt and Hendricks teach or suggest offering a preview version of an information product "for sale with a purchase price based on the customer-specified relevance criteria" as required by claims 15 and 38. Brandt discloses supplying a "customer with only a sample version of an image for evaluation" and supplying "the full-resolution or full-size, unaltered image" upon "payment of the specified fee." Brandt ,i 10. Brandt's sample version corresponds to the claimed "preview version." But the cited portions of 4 Appeal2018-004501 Application 12/497,687 Brandt do not discuss a variable fee for viewing the sample version. Although Brandt discloses "different levels of reproduction rights ... supplied for different fees," those reproduction rights relate to "the full- resolution or full-size, unaltered image," not the sample version. See Brandt ,i,i 10-12. Hence, we do not sustain theÂ§ 103(a) rejection of claims 15 and 38. DEPENDENT CLAIMS 20-22, 31, 32, 39-44, 48, AND 49 Claims 20-22, 31, 32, and 40 depend directly from claim 15, and claims 39-44 and 48 depend directly from claim 38. For the reasons discussed for claims 15 and 38, we do not sustain theÂ§ 103(a) rejection of claims 20-22, 31, 32, 39-44, 48, and 49. Because this determination resolves the appeal for all claims at issue, we need not address Appellants' other arguments regarding Examiner error. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) ( explaining that an administrative agency may render a decision based on "a single dispositive issue"). DECISION We reverse the Examiner's decision to reject claims 15, 20-22, 31, 32, 38-44, 48, and 49. REVERSED 5