Ex Parte Whitmyer - Page 12

             Appeal 2007-1305                                                                                         
             Application 09/725,394                                                                                   

         1   The claimed forms read on any formatted carrier of data, not just assignment                             
         2   forms.                                                                                                   
         3        Fucarile describes retrieving content after requesting that content (FF16).                         
         4   Fucarile’s system embeds licensing forms within the content (FF13), so Fucarile                          
         5   queries for the license form along with the content.  Both the content and the                           
         6   license are returned to the user (FF16), thus both are retrieved from Fucarile’s                         
         7   database server.                                                                                         
         8        A request for information as part of Fucarile’s commercial transaction (FF14)                       
         9   is a request to transfer the data, and is thus a transfer request.  Fucarile reassembles                 
        10   the license and data within the plug-in program after it has been transmitted from                       
        11   the database server, thus combining the license form and content.                                        
        12        As a result of the above operations, Fucarile’s software queries the database of                    
        13   information records to retrieve an information record corresponding to a transfer                        
        14   request, queries the database of recordation forms to retrieve a recordation form                        
        15   corresponding to the transfer request, and combines the retrieved information                            
        16   record with the retrieved recordation form to generate a transfer document (FF17).                       
        17        As to claim requirement that the nature of the content, i.e., the transfer request,                 
        18   is indicative of a transfer of intellectual property rights, this claim limitation relates               
        19   the content of the form, e.g., it is textual material, bearing no functional                             
        20   relationship to its underlying media, or the remainder of the claimed subject                            
        21   matter, and nonfunctional descriptive material cannot render nonobvious an                               
        22   invention that would have otherwise been obvious.  Further, we note that                                 
        23   Schneider’s content includes data indicative of a transfer of rights to the property                     
        24   in any event (FF11).  Thus, Schneider shows software receiving a transfer request                        
        25   indicative of a transfer of rights to the property.                                                      

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