09760242 (P.T.A.B. Oct. 21, 2016)

Ex Parte Davidson

Patent Trial and Appeal BoardOct 21, 2016

09760242 (P.T.A.B. Oct. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 091760,242 01112/2001 73462 7590 10/25/2016 Hall Estill Attorneys at Law (Seagate Technology LLC) 100 North Broadway, Suite 2900 Oklahoma City, OK 73102-8820 FIRST NAMED INVENTOR Robert J. Davidson 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. STL13096 2554 EXAMINER SHELEHEDA, JAMES R ART UNIT PAPER NUMBER 2424 NOTIFICATION DATE DELIVERY MODE 10/25/2016 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): rmccarthy@hallestill.com danderson@hallestill.com okcipdocketing@hallestill.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT J. DAVIDSON Appeal2015-000256 Application 09/760,242 Technology Center 2400 Before CAROLYN D. THOMAS, JOHN A. EV ANS, and AMBER L. HAGY, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. Â§ 134(a) of the Examiner's Final Rejection of claims 1-5, 8, 9, 19, 20, 24--26, 32, 37-39, and 42--45, all the pending claims in the present application. Claims 6, 7, 10-18, 21-23, 27-31, 33-36, 40, and 41 are canceled. See Claim Appendix. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We AFFIRM. The present invention relates generally to portable entertainment media storage. See Spec. 1: 12-13. Appeal2015-000256 Application 09/760,242 Claim 1 is illustrative: 1. A method of portably handling media files comprising: transferring a media file from a first memory to a memory of a portable digital storage module that is not encoded with any usage limitation of the media file; and during a purchase, encoding the portable digital storage module with access instructions that are executed by a controller in the portable digital storage module for defining an authorized usage condition of the transferred media file, so that after the purchase the access instructions limit playback of the media file based upon at least one of a time period and a number of playbacks, but the access instructions have no limit on a particular playback device. Appellant appeals the following rejection: Claim 1-5, 8, 9, 19, 20, 24--26, 32, 37-39, and 42--45 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Miller (US 6,327,230 Bl, Dec. 4, 2001), Braitberg (US 6,980,652 Bl, Dec. 27, 2005), and Hirota (US 6,606,707 Bl, Aug. 12, 2003). ANALYSIS Issue: Did the Examiner err in finding that the cited art collectively teaches or suggests "access instructions" and the access instructions having no limit on a particular playback device, as set forth in claim 1? Appellant contends that "Hirota's controller expressly limits access to only authenticated devices" (App. Br. 7) and that "Hirota expressly limits the playback device to those that are predetermined to be authenticated for use" (id. at 8). In response, the Examiner finds that "Braitberg discloses wherein any combination of one or more license limits may or may not be used" (Ans. 3). We agree with the Examiner. 2 Appeal2015-000256 Application 09/760,242 We refer to, rely on, and adopt the Examiner's findings and conclusions set forth in the Answer. Our discussions here will be limited to the following points of emphasis. Even if we assume arguendo (without deciding) that Hirota limits access to only authenticated devices (as proffered by Appellant), we highlight that the Examiner uses Braitberg, not Hirota, to teach or suggest that the access instructions have no limit on a particular playback device (see Final Act. 3--4; see also Ans. 3--4). Thus, Appellant's arguments do not take into account what the collective teachings of the prior art would have suggested to one of ordinary skill in the art and is therefore ineffective to rebut the Examiner's prima facie case of obviousness. See In re Keller, 642 F.2d 413, 425 (CCPA 1981 )("The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.") (citations omitted). This reasoning is applicable here. For example, Braitberg discloses that "[i]t is possible that different disks may be encoded with different types of licenses and/or restriction ... licenses for a particular number of uses or playbacks, licenses limited to a particular user or a particular playback machine ... "(7:35--48). In other words, as noted by the Examiner, Braitberg specifically teaches a flexible licensing system allowing a particular playback machine or not with its licenses/restrictions (i.e., access instructions) (see Ans. 4). We find that the claimed the access instructions have no limit on a particular playback 3 Appeal2015-000256 Application 09/760,242 device reads on Braitberg's different types of licenses. In any case, Appellant rebuts Hirota, and fails to rebut the specific findings used by the Examiner for the argued limitation in Braitberg. Appellant further argues that there is an "inherent need that the player be computer compatible with the license information stored in the portable media" (see App. Br. 6). However, we find that this argument ignores the Examiner's reliance on Hirota's portable media with its own controller (see Ans. 4), which would eliminate the need to use the player's controller to read the access instructions, as taught in Braitberg. In addition, the Examiner highlights, and we agree, that "the claims are merely directed to whether the stored usage rules include a limit regarding the playback device" (id. at 3), not computer compatibility requirements. Appellant also contends that the modification of Braitberg "would improperly change Braitberg's principle of operation" (App. Br. 9) because Braitberg "clearly disclose the license information stored to the portable media device is read by the external playback device (player), not by the portable media device itself' (id. at 10). In response, the Examiner finds, and we agree, that "Braitberg explicitly discloses wherein the usage of an optical disk is not required and that his disclosure regarding licensing and access limits would be useful for other devices and storage media (Ans. 5, citing Braitberg 12:8-13). In other words, Braitberg is not limited to any particular portable media disclosed therein. Thus, we find unavailing Appellant's contention that the modification proposed by the Examiner would change Braitberg's principle of operation given that Braitberg's media and/or drives described therein are not limited thereto. 4 Appeal2015-000256 Application 09/760,242 Appellant further contends that "the skilled artisan having read ivliller readily ascertains that it is silent regarding any disclosure whatsoever about a controller residing in a flash card or an MP3 card" (App. Br. 11). We highlight that the Examiner is relying on Hirota, not Miller (nor Braitberg), to teach or suggest a controller contained within a storage device to process usage limitations (see Final Act. 3--4; see also Ans. 5---6). Therefore, we find unavailing Appellant's contention that Miller is silent regarding a controller residing in a media given that Hirota is being used to teach this feature. Accordingly, we sustain the Examiner's rejection of claim 1. Appellant's arguments regarding the Examiner's rejection of independent claims 9 and 43 rely on the same arguments as for claim 1, and Appellant does not argue separate patentability for the dependent claims. See App. Br. 5-14. We, therefore, also sustain the Examiner's rejection of claims 2-5, 8, 9, 19, 20, 24--26, 32, 37-39, and 42--45. DECISION We affirm the Examiner'sÂ§ 103(a) rejection. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 5