Adobe Inc.

Patent Trials and Appeals Board

Jun 2, 2021

2020004341 (P.T.A.B. Jun. 2, 2021)

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.
15/080,181 03/24/2016 Arun Anantharaman P5402-US05 8650
108982 7590 06/02/2021
FIG. 1 Patents
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
COPPOLA, JACOB C
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
06/02/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Fig1Docket@fig1patents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD

____________

Ex parte ARUN ANANTHARAMAN
____________

Appeal 2020-004341
Application 15/080,1811
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, JAMES P. CALVE, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF DECISION
We affirm.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies “Adobe Inc.,” as the real party in interest. Appeal Br. 3.

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THE INVENTION
Appellant states that its claims describe, “[d]igital rights management
update techniques.” Spec. ¶ 1.
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. In a digital medium environment to update access control of
content by digital rights management functionality embedded as part of the
content, a method implemented by a computing device, the method
comprising:

receiving, by the computing device, specified traits for a behavior, the
specified traits used by a digital rights management module embedded as
part of the content to control which item of a plurality of items included as
part of the content is permitted access, individually, based on which
of the specified traits are met by traits associated with a request from a user
to access the content;

locating, by the computing device, a user population based on the
specified traits for the behavior that is permitted, by the digital rights
management module embedded as part of the content, to access at least one
item of the plurality of items included as part of the content;

identifying, by the computing device, a change in traits met by the
user population for the behavior, the change causing the digital rights
management module embedded as part of the content to restrict access of the
user population to the at least one item; and

forming, by the computing device responsive to the identifying, an
update including the change in the traits, the update configured to modify the
specified traits for the behavior of the embedded digital rights management
module used to control access to the at least one item of the plurality of
items included as part of the content that causes the embedded digital rights
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management module to permit access by the located user population as
having the change in the traits.

Appeal Br. 28 (Claims Appendix).

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Kobata US 2002/0077985 Al June 20, 2002
Maher US 2010/0293058 Al Nov. 18, 2010
Hajiyev US 2017/0249663 Al Aug. 31, 2017
The following rejections are before us for review.
Claims 1–9 and 16–20 are rejected under 35 U.S.C. § 112(b) as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventor regards as the invention.
Claims 1–20 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
Claims 1–20 are rejected under 35 U.S.C. § 103 as being unpatentable
over Maher (“Maher”), in view of Kobata (“Kobata”), and Hajiyev
(“Hajiyev”).

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FINDINGS OF FACT
1. Maher discloses:
As shown in FIG. 3, a consumer’s device receives content and
advertisements (300). As described above, the consumer’s
device could receive the content and advertisements via any
suitable means. The content and advertisements can be delivered
together or separately, at different times, and/or from different
sources. Upon receiving a request from the consumer to render
(e.g., view, play, run, etc.) the content (302), the user’s system
evaluates a license associated with the content (304) to determine
if the requested use is authorized or otherwise permitted (306). If
the request is authorized (i.e., a “yes” exit from block 306), and
the license further requires that one or more advertisements be
presented when the content is rendered, the user’s system
optionally filters its set of ads to exclude any ads that the content
and/or ad licenses prohibit from being displayed with the
requested content (308).
¶ 55.
2. Maher discloses:
In preferred embodiments, and as described in more detail
below, a DRM engine, such as that described in the '693
application, can be used to evaluate the controls associated
with pieces of content and advertisements in order to determine
which advertisements to render (e.g., display) with a piece of
content. Such a DRM engine is flexible, and the rules which can
be expressed for each content item and for each ad are very open.
In one embodiment, the rules can be expressed by the content
provider or the advertiser in a simple text, such as XML. In some
embodiments, these rules can later be converted into the type of
objects supported by the DRM engine (e.g., using a tool for
generating code for the DRM engine’s virtual machine) and can
be associated with the content or ad.
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¶ 58.
3. Maher discloses:
In preferred embodiments, the transfer of content and/or
advertisements to the client can be accomplished by any suitable
combination of offline and/or online modes. For example, a
client may have a content and advertisement delivery interface
that provides web services for a client player to download content
and/or advertisements from the system backend.

¶ 130.
4. Maher discloses:
Content items and advertisements can be independently super-
distributed, or distributed via conventional commercial methods.
Efficient mechanisms are employed to ensure that when a
consumer uses content, online or offline, that this usage event is
funded by advertising that is well-targeted to that consumer, and
that the event optimally compensates the content provider or
distributor, as well as other stakeholders who participate in
adding value to the system.

¶ 5.
5. Hajiyev discloses:
Herein, ‘behavioral characteristics’ includes, but is not
limited to, the emotional state data of a given user, e.g., emotions
detected from facial expressions and other physiological
indicators that can be captured via a webcam. Additionally, the
behavioral data can include other information that can be
collected from a user that interacts with media content, e.g., any
of gestures, blood pressure (e.g., based on skin colour),
temperature, blinking, heart rate (e.g., read visually by slight
changes of skin colour), etc.
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¶ 24.
6. Hajiyev discloses:
Behavioral data according to certain embodiments
can also include data concerning the user’s interaction with the
computer, e.g., audio data, click data or other data indicative of
the user’s interest in a portion of the display. In addition to
behavioral data, embodiments of the invention can also provide
for the collection and transmission of other user data, e.g., data
indicative of other details about the user, such as gender, age,
location, etc.

¶ 25.
7. Hajiyev discloses:
To aid meaningful comparison, program code is provided
according to certain embodiments that instructs the processor to
derive the behavioral characteristics of the user from time series
behavioral data recorded for that user. The desired behavioral
characteristics of the ad target can be derived from aggregated
behavioral data recorded for a plurality of users who have
previously been exposed to the ad.

¶ 26.
8. Hajiyev discloses:

Similarly, the ad target profile can associate a given ad with one
or more of a plurality of preset ad target types, wherein each
preset ad target type includes a combination of behavioral
characteristics. For example, according to one embodiment the
ad target profile comprises an ad target profile metric, which is a
data structure that stores a weighting value for the ad against each
of a plurality of preset ad target types.

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¶ 35.

9. Hajiyev discloses:

Similarly, aggregated behavioral data collected from a plurality
of users can be used to refine the ad target profile. For example,
the collected data can be used to alter one or more of the plurality
of preset ad target types that are associated with the successful
ad, or to adjust one or more of the weighting values stored in the
ad target profile metric.

¶ 45.

10. Kobata discloses:

This authentication procedure also can be done locally, via the
local digital rights database 412 or another digital rights database
available via some other storage device accessible by the
computer 310. Also, digital rights stored locally on the computer
310 or available via some other storage device accessible by the
computer 310 can be stored, for example, as an encrypted digital
rights database file. This authentication procedure may be
required for every attempt to manipulate the digital content 320,
the first attempt to manipulate the digital content 320 after it is
delivered to the computer device 310, or may never be required,
depending on the design and specifications of the content
provider.

¶ 111.

11. Kobata discloses:

Furthermore, the personal rights manager module 414 of the
digital content 320 can be a stand-alone software program, or it
can be an integrated part of the digital content 320 itself. The
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personal rights manager module 414 can be designed as a general
digital rights management program, or it can be designed to
integrate with (or ‘piggy-back’ onto) an independent software
vendor’s (ISV) existing viewer/ manipulation software.

¶ 115.

12. The Examiner found, “[t]herefore, it would have been obvious to
one of ordinary skill in the art, at the time the invention was made, to modify
the DRM module of Maher to be embedded as taught by Kobata. One
would have been motivated to do so in order to simplify the availability of
the DRM module.” (Final Act. 9).
13. The Examiner found, “[o]ne would have been motivated to do so
in order to adjust access to content (such as advertisements in Maher) based
on learned/changed traits of a user population.” (Final Act. 10).

ANALYSIS
35 U.S.C. § 112(b) REJECTION
We will not sustain the rejection of claims 1–9 and 16–20 under
35 U.S.C. § 112(b) as being indefinite because we do not construe claim 16
to invoke 35 U.S.C. § 112(f).
The Examiner found:
The following claim limitations invoke 35 U.S.C. § 112(f):
In claim 16, ‘a population identification module
implemented at least partially in hardware to: locate a user
population meeting specified traits for a behavior, the specified
traits used by a digital rights management module that is
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embedded as part of the content to control which item of a
plurality of items included as part of the content is permitted
access, individually, based on which of the specified traits are
met, respectively, by traits associated with a request from the
user population to access the content; and identify a change in
traits met by the user population for the behavior that causes
the embedded digital rights management module to no longer
permit access of the user population to at least one item of the
plurality of items of the content;’

In claim 16, “an update formation module implemented
at least partially in hardware to form an update that includes
the change in the traits met by the user population, the update
configured to modify the specified traits for the behavior of the
digital rights management module to permit the user population
to access the at least one item of the plurality of items of the
content.”

Final Act. 2–3 (emphasis added).

The Examiner concluded: “However, the written description fails to
disclose the corresponding structure, material, or acts for performing the
entire claimed function and to clearly link the structure, material, or acts to
the function. Therefore, the claim is indefinite and is rejected under 35
U.S.C. 112(b).” (Final Act. 2–3).
Appellant argues, “[a]s described in the subject Application, for
instance, the terms ‘module,’ ‘functionality,’ and ‘component’ as used
herein generally represent software, firmware, hardware, or a combination
thereof.’” (Appeal Br. 13 (citing Spec. ¶ 58)).
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As in clear from Appellant’s comments (id.), Appellant does not
intend this claim language to invoke a means plus function interpretation.
The plain face of the language of the claims bears this true. It is well settled
that the non-structural term in a means plus function recitation must not be
modified by sufficient structure, material, or acts for achieving the specified
function claimed. See Rodime PLC v. Seagate Technology, Inc., 174 F.3d
1294, 1303–04 (Fed. Cir. 1999). Here, we find the modifying non-structural
terms, i.e., “population identification” and “update formation,” recite acts for
which the specified function is effected. Hence, this language does not
invoke means plus function interpretation.
Furthermore, the functional language following the terms “population
identification” and “update formation,” is highlighted in italics above. We
also find this language recites sufficient structure to perform the entire
claimed function, and hence does not warrant interpretation under U.S.C.
§ 112(f). Id. at 1305.
35 U.S.C. § 112(a) REJECTION
The Examiner rejects claims 1–20 under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement. Specifically, the
Examiner found:
[A] Applicant’s specification does not describe an
algorithm that performs the function ‘identifying, by the
computing device, a change in traits met by the user population
for the behavior, the change causing the digital rights
management module embedded as part of the content to restrict
access of the user population to the at least one item’ in sufficient
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detail such that one of ordinary skill in the art can reasonably
conclude that the inventor invented the claimed subject matter.

(Final Act. 5).
…
Claim 1 also recites the following additional functions:
[B] (1) locating, by the computing device, a user
population based on the specified traits for the behavior that is
permitted, by the digital rights management module embedded
as part of the content, to access at least one item of the plurality
of items included as part of the content; and

[C] (2) forming, by the computing device responsive to the
identifying, an update including the change in the traits, the
update configured to modify the specified traits for the behavior
of the embedded digital rights management module used to
control access to the at least one item of the plurality of items
included as part of the content that causes the embedded digital
rights management module to permit access by the located user
population as having the change in the traits.

The Examiner finds that Applicant’s disclosure does not
describe an algorithm(s) that performs these additional functions
in sufficient detail such that one of ordinary skill in the art can
reasonably conclude that the inventor invented the claimed
subject matter.

(Final Act. 6–7).

Appellant responds to each of items A–C above by citing to specific
sections of the Specification which establish a basis for written description.
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Specifically, concerning item A, Appellant cites to paragraph 43 of
the Specification, which specifically describes that: “population
identification module 408, for instance, may continue to monitor users
included in the user population 312 to identify a change, if any, in traits of
that user population. This may include changes in the users, devices
employed by the users, an environment in which the users are disposed, and
so forth.” (Appeal Br. 14, citing Spec. ¶ 43).
As to item B, Appellant cites to the Specification at paragraphs 50 and
51. Paragraph 51 in fact references the algorithm set forth in Figure 8 which
explicitly describes at step 802:
Receive data describing specified traits for a behavior, the
specified traits used as part of a control action by a digital rights
management module that is embedded as part of the content to
control access to individual items of the content based on
whether the specified traits are met by traits associated with a
request from a user to access at least one of the items of the
content.

Spec., Figure 8, step (802).
As to item C above, Appellant again cites to paragraph 51 and to
Block 806 which describes, “Identify a change in the behavior of the user
population.” Appellant then goes on to cite paragraph 51 of the
Specification. Paragraph 51 describes the use of machine learning to effect
modification of the specific traits for the behavior used to control access to
the desired content as follows: “[m]achine learning is then performed, which
may include matrix factorization, to learn behaviors of how this user
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population acts towards particular items of content. Machine learning may
continue to be employed over time, therefore, to recognize changes in these
learned behaviors.”
We agree with Appellant that the items listed above as A–C have
sufficient basis in the Specification to meet the written description
requirements of 35 U.S.C. § 112(a). The Examiner seizes on the
Specification as not disclosing “an algorithm (e.g., the necessary steps
and/or flowcharts) that performs the claimed function(s).” (Final Act. 7).
But, while such an algorithm would be required for a computer-enabled
means-plus-function limitation in a claim, as we have found above, there are
no means plus function limitations in the claim to require such type of
description. See Aristocrat Techs. Austl. Pty v. Int’l Game Tech., 521 F.3d
1328, 1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d
1241, 1253 (Fed. Cir. 2005) (“‘[t]he corresponding structure for a § 112 ¶ 6
claim for a computer-implemented function is the algorithm disclosed in the
specification.’ [Harris] 417 F.3d at 1249.”).
Accordingly we will not sustain the rejection of claims 1–20 under
35 U.S.C. § 112(a).

35 U.S.C. § 103 REJECTION
The Appellant argued claims 1–20 as a group. (Appeal Br. 16). We
select claim 1 as the representative claim for this group, and the remaining
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independent claims standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015).
Appellant argues,

in claim 1 an embedded module is configured to permit access to
the items included as part of the content, whereas in Maher the
ads are provided separately from the content….

Further, as the DRM module is embedded as part of the content
this dynamic consumption may be performed offline without
accessing a network, and thus may address limitations of
conventional techniques that required access in order to serve
different content, such as targeted advertisements as part of
webpages that are obtained and not available locally until
relevant characteristics of a user are determined. This
functionality is simply not possible in the asserted references.

(Appeal Br. 19).
First, in light of the breadth of the claim, the Appellant’s argument is
not persuasive as to error in the rejection because nothing in claim 1 recites
that the digital rights management module acts autonomously of a network.
Second, Maher explicitly discloses, “[t]he content and advertisements can be
delivered together or separately, at different times, and/or from different
sources” (FF. 1, see also, FF. 2–4). Hence, Appellant’s argument that “in
Maher the ads are provided separately from the content,” is without merit.
Third, Kobata explicitly discloses the personal rights manager module can
be an integrated part of the digital content, itself and the “digital rights
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stored locally on the computer 310 or available via some other storage
device accessible by the computer 310 can be stored.” (FF. 10, see also 11).
Appellant argues,
Hajiyev merely describes an ad target profile that is used to target
particular ads, and that the profile may be refined based on
additional information to increase chances the ad successfully
achieves its objective.
Claim 1, however, recites ‘identifying ... a change in traits
met by the user population for the behavior, the change causing
the digital rights management module embedded as part of the
content to restrict access of the user population to the at least one
item’ and ‘forming ... an update including the change in the traits
... to permit access by the located user population as having the
change in the traits.’ In this way, the update permits continued
access to an item of content to the user population by addressing
changes in traits of that user population. Hajiyev, however,
merely describes refining an ad target profile to increase chances
of the ad successfully achieving its objective. Thus, Hajiyev
describes changing the different user types that are to be
presented with an ad, whereas the claimed feature recites use of
the update such that the same user population is permitted access
to the item of content.

(Appeal Br. 20–21).
We disagree with Appellant. The Examiner found that Hajiyev
discloses this feature at paragraphs 13, 26, 35, 96, 15, 24, 25–28, 45, 97, 45,
66, 97. (Final Act. 9–10). In light of the breadth of the claim, the
Appellant’s argument is not persuasive as to error in the rejection first
because claim 1 does not recite the phrase, “same user population is
permitted access to the item of content,” as asserted by Appellant. In fact,
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claim 1 more generally recites, “to permit access by the located user
population.” Moreover, we find paragraph 45 of Hajiyev is of particular
relevance in that it discloses that “aggregated behavioral data collected from
a plurality of users can be used to refine the ad target profile.” (FF. 9).
Accordingly, we construe Hajiyev’s “a plurality of users” who refine “the ad
target profile” as the claimed “located user population.” It follows then that
this population which refines the ad target profile would be permitted access
to the content for which they were responsible for changing the traits which
control access to that content. (FF. 5–9). See KSR Int’l. Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). (In making the obviousness determination one
“can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”)
“Appellant respectfully submits that the Office’s stated motivation
and reasoning is misplaced and legally insufficient when combining the
references, as it is nothing more than a generalized efficiency argument.”
(Appeal Br. 23).
We disagree with Appellant. First, to the extent Appellant seeks an
explicit suggestion or motivation in the reference itself, this is no longer the
law in view of the Supreme Court’s holding as made clear in KSR Int’l. Co.
v. Teleflex Inc. See KSR Int’l, 550 U.S. at 418. The Examiner has provided
some articulated reasoning with some rational underpinning for why a
person with ordinary skill in the art would modify Maher with the embedded
software of Kobata (FF. 12) and modify Maher to alter content based on
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changes in the population traits as taught by Hajiyev. (FF. 13). We find this
analysis reasonable and explicit. Appellant’s argument is thus not
persuasive as to error in the rejection.
Appellant argues,

it is respectfully submitted that the asserted combination of
references does not teach or suggest the claimed features. In
Maher, for instance, a clearinghouse is used to provide ads for
viewing with content. Hajiyev describes an ad bidding process.
Kobata describes a technique for distribution and access of
digital assets.

(Appeal Br. 26).
We disagree with Appellant. First, as set forth above, we find the
Examiner has meet all the claim elements as required by claims 1 using the
combination of Maher in view of Kobata and Hajiyev. (See Final Act. 8–11,
13–15). Second, Appellant has not identified error in the Examiner’s
interpretations of the cited references or the claim language. The Appellant
offers no substantive arguments to rebut the specific underlying factual
findings made by the Examiner in support of the ultimate legal conclusion of
obviousness. And, we decline to examine the claims sua sponte, looking for
distinctions over the prior art. Cf. In re Baxter Travenol Labs., 952 F.2d
388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.”). The Appellant asserts that because each of
the prior art references applies a DRM to a different application i.e., an
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advertisement clearinghouse, an advertisement bidding process and a generic
technique to access digital assets, they are not combinable. But, absent
specific, technical reasons why the underlying technologies are
incompatible, the Examiner’s rejection stands. If anything, for example,
Kobata’s generic disclosure of a technique for distribution and access of
digital assets would make it combinable in like systems for similar purposes.
As we found above, the Examiner’s reasoning, given the breadth of the
claim, is sound. Cf. KSR, 550 U.S. at 421.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–20 under
35 U.S.C. § 103.
We conclude the Examiner erred in rejecting claims 1–9 and 16–20
under 35 U.S.C. § 112(b), and claims 1–20 under 35 U.S.C. § 112(a).

SUMMARY DECISION
In summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1–9, 16–20 112(b) Indefinite 1–9, 16–
20
1–20 112(a) Written
Description
1–20
1–20 103 Maher, Kobata,
Hajiyev
1–20
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Overall
Outcome
1–20

Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1).
The decision of the Examiner to reject claims 1–20 is Affirmed.
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)(iv).

AFFIRMED