Ex Parte Ogilvie

Patent Trial and Appeal BoardApr 24, 2013

11532514 (P.T.A.B. Apr. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 1 ___________ 2 3 BEFORE THE PATENT TRIAL AND APPEAL BOARD 4 ___________ 5 6 Ex parte JOHN W. OGILVIE 7 ___________ 8 9 Appeal 2011-007418 10 Application 11/532,514 11 Technology Center 3600 12 ___________ 13 14 15 Before MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK and 16 THOMAS F. SMEGAL, Administrative Patent Judges. 17 18 SMEGAL, Administrative Patent Judge. 19 20 21 DECISION ON APPEAL22 Appeal 2011-007418 Application 11/532,514 2 STATEMENT OF THE CASE1 1 John W. Ogilvie (Appellant) seeks our review under 35 U.S.C. § 134 2 of the final rejection of claims 21-40, the only claims pending in the 3 application on appeal. We have jurisdiction over the appeal pursuant to 35 4 U.S.C. § 6(b). 5 6 SUMMARY OF DECISION 7 We REVERSE and enter a new ground of rejection pursuant to 37 8 C.F.R. 41.50(b). 9 10 THE INVENTION 11 Appellant invented a method and device for preventing user access to 12 a software program unless the user acknowledges having viewed a published 13 patent application. (Spec. 1: 8-10). 14 An understanding of the invention can be derived from a reading of 15 exemplary claim 21, which is reproduced below: 16 21. A method for providing notice of 17 provisional patent rights) comprising the 18 computer-implemented steps of: 19 presenting a notice indicating that a device 20 may be subject to rights under a published patent 21 application; 22 preventing, through at least one of hardware 23 restrictions or program code, access to at least one 24 feature of the device until an indication is received 25 that the published patent application has been 26 reviewed; 27 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed August 19, 2010) and Reply Brief (“Reply Br.,” filed January 12, 2011) and the Examiner’s Answer (“Ans.,” mailed November 12, 2010). Appeal 2011-007418 Application 11/532,514 3 and at least one of: graphically rendering on 1 a display of the device a copy of the published 2 patent application on in response to selection of a 3 hyperlink, allowing an assertion that the published 4 patent application has been previously reviewed; 5 and 6 allowing access to the feature, the access 7 having been previously prevented by the 8 preventing step. 9 10 REFERENCES 11 The Examiner relies upon the following prior art: 12 Holmes US 6,119,108 Sep. 12, 2000 13 Shuster US 6,389,458 B2 May 14, 2002 14 Retherford US 2002/0082937 A1 Jun. 27, 2002 15 16 REJECTION 17 The following ground of rejection was included in the final rejection 18 and is before us for review: 19 Claims 21-40 stand rejected under 35 U. S. C. §103(a) as being 20 unpatentable over Shuster and Holmes, further in view of Retherford. 21 22 ANALYSIS 23 The rejection of claims21-40 under 35 U.S.C. § 103(a) as being 24 unpatentable over Shuster and Holmes, further in view of Retherford 25 Claims 21-36 26 We are persuaded by Appellant’s arguments (App. Br. 18 and Reply 27 Br. 6) that the Examiner erred in rejecting claims 21-40 under 35 U.S.C. 28 §103(a) as being unpatentable over the combined teachings of Shuster, 29 Appeal 2011-007418 Application 11/532,514 4 Holmes and Retherford. We agree with Appellant (Reply Br. 6) that the 1 Examiner has failed to established a prima facie showing of obviousness by 2 failing to articulate a rationale with logical underpinnings in combining 3 Shuster, Holmes, and Retherford. 4 The Examiner’s asserted reasoning for modifying the combination of 5 Shuster and Holmes to include the teachings of Retherford is: 6 the desire to provide a first electronic link, 7 associating a code with the customer, storing the 8 code on the database, transmitting the code to the 9 customer across a second electronic link, receiving 10 the code from the customer across a third 11 electronic link, and providing – the services from a 12 service provider to the customer responsive to 13 receiving the code from the customer. 14 Ans. 5. 15 We find this assertion to lack logical underpinnings and not be pertinent to 16 the Examiner’s proposed combination, which was directed to preventing 17 access to at least one feature of the device until an indication is received that 18 the published patent application has been reviewed. Id. 19 The Examiner rejected independent claim 29 using the same rationale 20 used to reject claim 21. Ans. 7. For the same reasons, we are persuaded by 21 Appellant that the Examiner erred in rejecting claim 29 as obvious over the 22 combination of Shuster, Holmes and Retherford. 23 Claims 37-40 24 In rejecting independent claim 37, the Examiner relies upon a 25 different rationale than used to reject independent claims 21 and 29. In 26 rejecting claim 37, the Examiner cites to column. 11, lines 5-20 of Shuster as 27 teaching every limitation. Ans. 9. We fail to see how this passage from 28 Shuster, which broadly describes a user’s computer, a display device, and a 29 Appeal 2011-007418 Application 11/532,514 5 user’s input device teaches claim 37’s computer readable-medium having 1 the claimed instructions, and we note that the Examiner provides no other 2 explanation (see Ans. 9 and 13). Therefore, we find that the Examiner has 3 failed to establish a prima facie showing of obviousness in rejecting claim 4 37. 5 Accordingly we reverse the Examiner’s rejection of claims 21, 29, and 6 37, and claims 22-28, 30-36, and 38- 40, dependent thereon, under 35 U.S.C. 7 § 103(a) as being unpatentable over a combination of Shuster, Holmes and 8 Retherford. 9 NEW GROUNDS OF REJECTION 10 Pursuant to our authority under 37 C.F.R. 41.50(b), we enter a new 11 ground of rejection on claims 21, 29, and 37 under 35 U.S.C. § 102(e) as 12 being anticipated by each of Admitted Prior Art in the Appellant’s 13 Specification (APA) or Holmes. While we have exercised our discretion 14 under 37 C.F.R. 41.50(b) in rejecting independent claims 21, 29, and 37, 15 upon any further prosecution, the Examiner should consider whether the 16 following new grounds applies to the remainder of the claims. 17 We will take claim 21 as representative. 18 Claim Construction 19 Initially, we find the requirement that the information in the notice be 20 a “published patent application” is non-functional descriptive material as it 21 is not functionally related to the substrate (e.g. the computer-readable 22 medium) or functionally related to how the method is performed. 23 Nonfunctional descriptive material cannot render nonobvious an invention 24 that would have otherwise been obvious. In re Ngai, 367 F.3d 1336, 1339 25 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) 26 Appeal 2011-007418 Application 11/532,514 6 (when descriptive material is not functionally related to the substrate, the 1 descriptive material will not distinguish the invention from the prior art in 2 terms of patentability). See Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 3 2008) (precedential); Ex parte Curry , 84 USPQ2d 1272, 1274 (BPAI 2005) 4 (informative) (Fed. Cir. Appeal No. 2006-1003), aff'd, (Rule 36) (June 12, 5 2006); and Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) 6 (informative). 7 Anticipation by Admitted Prior Art 8 On page 1 of the Specification, the Appellant describes prior art 9 “click-through agreements” that present the user with a license agreement 10 (i.e., the claimed notice) and prevents a user from accessing core system 11 features (i.e., the claimed feature of the device) until an “I AGREE” button 12 is pressed (i.e., the claimed indication). Spec. 1:14-23. Claim 21 is 13 anticipated by this description of a “click-through agreement.” 14 Anticipation by Holmes 15 Holmes describes a system which prevents access to a sealed object 16 (i.e. the claimed feature of the device) until the user is presented with a 17 license (i.e., the claimed notice) and has agreed to purchase the license by 18 providing sensitive information (i.e., the claimed indication). See Holmes 19 col. 4, l. 59 – col. 5, l. 28. 20 DECISION 21 22 The decision of the Examiner to reject claims 21-40 is reversed. We 23 enter a new ground of rejection of claims 21, 29, and 37. 24 This decision contains a new ground of rejection pursuant to 25 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of 26 rejection pursuant to this paragraph shall not be considered final for judicial 27 Appeal 2011-007418 Application 11/532,514 7 review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN 1 TWO MONTHS FROM THE DATE OF THE DECISION, must exercise 2 one of the following two options with respect to the new ground of rejection 3 to avoid termination of the appeal as to the rejected claims: 4 (1) Reopen prosecution. Submit an appropriate amendment of the 5 claims so rejected or new evidence relating to the claims so rejected, or both, 6 and have the matter reconsidered by the examiner, in which event the 7 proceeding will be remanded to the Examiner. 8 (2) Request rehearing. Request that the proceeding be reheard under 9 § 41.52 by the Board upon the same record. 10 11 REVERSED; 37 CFR 41.50(b) 12 13 14 15 Klh 16