D2L CORPORATION

Patent Trials and Appeals Board

Oct 26, 2020

14242931 - (D) (P.T.A.B. Oct. 26, 2020)

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.
14/242,931 04/02/2014 Erkang WEI K8001246US 5498
34236 7590 10/26/2020
GOWLING WLG (CANADA) LLP
50 QUEEN STREET NORTH, STE. 1020
P.O. BOX 2248
KITCHENER, ONTARIO N2H6M2
CANADA
EXAMINER
LIN, AMIE CHINYU
ART UNIT PAPER NUMBER
2436
NOTIFICATION DATE DELIVERY MODE
10/26/2020 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):
JEFF.WONG@GOWLINGWLG.COM
VAL.COTTRILL@GOWLINGWLG.COM
Waterloo.IP@gowlingwlg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ERKANG WEI
____________________

Appeal 2019-002338
Application 14/242,931
Technology Center 2400
____________________

Before ERIC S. FRAHM, JOHNNY A. KUMAR, and BETH Z. SHAW,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–26. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

INVENTION
Appellant’s invention “relates generally to digital rights” and is
directed to a method (claims 1–15) and system (claims 16–26) “for digital

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a) (2017). According
to Appellant, D2L Corporation is the real party in interest (Appeal Br. 3).
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rights enforcement over a plurality of user devices” (Spec. ¶ 1). Digital
rights are enforced by a content provider, and digital content is protected,
using Digital Right Management (DRM) data to control access and limit use
after sale and distribution of the digital content (see Spec. ¶ 3). Appellant’s
disclosed and claimed invention can increase ease of use by customers who
download electronic books or other digital content through online purchases,
where the customer has multiple devices capable of displaying the digital
content (see Spec. ¶ 3). Independent method claim 1 is illustrative of the
invention and is reproduced below, with bracketed lettering and emphases
added to disputed portions of the claim.
1. A method for digital rights enforcement over multiple
devices, the method comprising:
receiving, by a server, a request for digital content from
a user via a selected user device over a network;
determining the digital content requested by the user;
determining digital rights associated with the digital content;
determining access rights relating to authorized devices
for the user based at least in part on the digital rights
associated with the digital content;
determining whether the user has exhausted the access
rights; and
if the access rights are exhausted:
[A] determining at least one content use factor
for each of the user's previously authorized user
devices, wherein the at least one content use factor
includes one or more of a time since the digital content
was downloaded on the previously authorized user
devices, a time since content corresponding to the
requested digital content was last reviewed on the
previously authorized user devices, and a time the
content was reviewed on the previously authorized user
device;
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[B] determining a previously authorized user
device on which to revoke access to the digital content
based on the at least one content use factor; and
revoking access rights to the previously
authorized user associated device;
otherwise downloading the digital content on the
selected user device.

Appeal Br. 21, Claims Appendix (emphases and bracketed lettering
added).

EXAMINER’S REJECTIONS
The Examiner rejected claims 1–3, 5, 9–11, 13, 14, 16–19, 22, and 23
under 35 U.S.C. § 103 as being unpatentable over Gilder et al. (US
2008/0148363 A1; published June 19, 2008) (hereinafter, “Gilder”), Roberts
et al. (US 2014/0156373 A1; published June 5, 2014 and filed Oct. 31,
2013) (hereinafter, “Roberts”), and Greene et al. (US 2006/0253887 A1;
published Nov. 9, 2006) (hereinafter, “Greene”). Final Act. 3–9.
The Examiner rejected claim 4 under 35 U.S.C. § 103 as being
unpatentable over Gilder, Roberts, Greene, and Lilley (US 2008/0195546
A1; published Aug. 14, 2008). Final Act. 9–10.
The Examiner rejected claim 6 under 35 U.S.C. § 103 as being
unpatentable over Gilder, Roberts, Greene, and Hotes et al. (US
2010/0242097 A1; published Sept. 23, 2010) (hereinafter, “Hotes”). Final
Act. 10.

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The Examiner rejected claims 7, 8, and 21 under 35 U.S.C. § 103 as
being unpatentable over Gilder, Roberts, Greene, and Marivoet et al. (US
2010/0250917 A1; published Sept. 30, 2010) (hereinafter, “Marivoet”).
Final Act. 10–11.
The Examiner rejected claims 12 and 24 under 35 U.S.C. § 103 as
being unpatentable over Gilder, Roberts, Greene, and Adam et al. (US
2014/0344571 A1; published Nov. 20, 2014 and filed July 2, 2013)
(hereinafter, “Adam”). Final Act. 11–12.
The Examiner rejected claim 15 under 35 U.S.C. § 103 as being
unpatentable over Gilder, Roberts, Greene, and Dinsmore et al. (US
2015/0020149 A1; published Jan. 15, 2015 and filed June 2, 2014 based on
US Provisional Appl. No. 61/846,356 filed July 15, 2013) (hereinafter,
“Dinsmore”). Final Act. 12–13.
The Examiner rejected claim 20 under 35 U.S.C. § 103 as being
unpatentable over Gilder, Roberts, Greene, and Parry et al. (US
2014/0013450 A1; published Jan. 9, 2014) (hereinafter, “Parry”). Final Act.
13–14.
The Examiner rejected claims 25 and 26 under 35 U.S.C. § 103 as
being unpatentable over Gilder, Roberts, Greene, and Allen et al. (US
2007/0100829 A1; published May 3, 2007) (hereinafter, “Allen”). See Final
Act. 3–9; Ans. 3–14. Final Act. 14–15.

ANALYSIS
We have reviewed Appellant’s arguments in the Appeal Brief (Appeal
Br. 11–20), the Examiner’s rejections (Final Act. 3–14), and the Examiner’s
response to Appellant’s arguments (Ans. 3–18). Appellant’s arguments have
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persuaded us of error in the Examiner’s rejections of all of the disputed
claims under 35 U.S.C. § 103.
Appellant presents several arguments asserting the Examiner’s
rejections of independent claims 1 and 16,2 each relying upon the same base
combination of Gilder, Roberts, Greene, is in error (Appeal Br. 11–20). The
issue presented by these arguments is whether or not the Examiner erred in
finding the base combination of Gilder, Roberts, and Greene teaches or
suggests determining a content use factor (see claim 1, limitation A), and
determining a previously authorized user device based on that content use
factor (see claim 1, limitation B), as recited in independent claim 1, and as
commensurately recited in remaining independent claim 16.
The Examiner’s conclusion of obviousness is based on the
interpretation that the content use factor recited in limitations A and B of
claim 1, and as similarly recited in claim 16, is met by Roberts’ teaching of
the date of activation/registration of a device (see Final Act. 5–6 citing
Roberts ¶¶ 88–90; Ans. 3–4 citing Roberts Figs. 15, 16). The Examiner
interprets the term “content use factor” as being “any type of data related to
any content use” (Ans. 3). However, in this case, the Examiner has applied
the broadest possible interpretation of “content use factor,” and not the
broadest reasonable interpretation, based on Appellant’s claims, Drawings,
and Specification. See In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed.
Cir. 2017) (stating that “the Board cannot construe the claims so broadly that

2 Although Appellant argues claims 1 and 9 in the Appeal Brief (see Appeal
Br. 11), we consider this to be harmless error. Appellant recognizes that the
independent claims are claims 1 and 16 (see Appeal Br. 7–9), and appears to
have inadvertently argued claim 9 in place of claim 16.
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its constructions are unreasonable under general claim construction
principles . . .” and that giving claim terms “a strained breadth in the face of
the otherwise different description in the specification [is] unreasonable”
(internal quotation marks omitted)); TriVascular, Inc. v. Samuels, 812 F.3d
1056, 1062 (Fed. Cir. 2016) (“While the broadest reasonable interpretation
standard is broad, it does not give the Board an unfettered license to interpret
the words in a claim without regard for the full claim language and the
written description.”). The broadest reasonable interpretation differs from
the broadest possible interpretation. Smith, 871 F.3d at 1383; see also
MPEP § 2111 (9th Ed., Rev. 10.2019, June 2020) (“The broadest reasonable
interpretation does not mean the broadest possible interpretation. Rather, the
meaning given to a claim term must be consistent with the ordinary and
customary meaning of the term (unless the term has been given a special
definition in the specification), and must be consistent with the use of the
claim term in the specification and drawings.”). The correct inquiry in
giving a claim term its broadest reasonable interpretation in light of the
specification is “an interpretation that corresponds with what and how the
inventor describes his invention in the specification, i.e., an interpretation
that is ‘consistent with the specification.’” Smith, 871 F.3d at 1382–83
(quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)).
Here, the broadest reasonable interpretation of a content use factor is a
factor or data concerning how digital content is being used, not the time or
date of, or since, registration of the device. In this light, we agree with
Appellant’s contentions (see Appeal Br. 11–13) that on this record, Roberts
fails to teach or suggest determining and using any content use factor, as
required by claims 1 and 16 (see, e.g., claim 1, limitations A and B). We
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conclude that one of ordinary skill in the art, looking at the cited portions of
Roberts, would not consider a content use factor to encompass Roberts’
device registration, date of registration, or time since registration.
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of independent claims 1 and 16, and the claims which depend
thereupon. Accordingly, we do not sustain the Examiner’s rejections of
independent clams 1 and 16, or dependent claims 2–15 and 17–26, which
rely on the same base combination of Gilder, Roberts, and Greene.

CONCLUSION
We reverse the Examiner’s rejections of claims 1–26 under 35 U.S.C.
§ 103.
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In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5, 9–11,
13, 14, 16–19,
22, 23
103 Gilder, Roberts,
Greene
1–3, 5, 9–
11, 13, 14,
16–19, 22,
23
25, 26 103 Gilder, Roberts,
Greene, Allen
25, 26
4 103 Gilder, Roberts,
Greene, Lilley
4
6 103 Gilder, Roberts,
Greene, Hotes
6
7, 8, 21 103 Gilder, Roberts,
Greene, Marivoet
7, 8, 21
12, 24 103 Gilder, Roberts,
Greene, Adam
12, 24
15 103 Gilder, Roberts,
Greene, Dinsmore
15
20 103 Gilder, Roberts,
Greene, Parry
20
Overall
Outcome
1–26

REVERSED