Ex Parte Jung et al

Patent Trial and Appeal Board

Mar 24, 2016

12287719 (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/287,719 10/10/2008
71484 7590 03/28/2016
IV - SUITER SW ANTZ PC LLO
14301 FNB PARKWAY, SUITE 220
OMAHA, NE 68154
FIRST NAMED INVENTOR
Edward K.Y. Jung
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.
0306-007-002-CIP002 9197
EXAMINER
KING,JOHNB
ART UNIT PAPER NUMBER
2498
NOTIFICATION DATE DELIVERY MODE
03/28/2016 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):
file@suiter.com
srs@suiter.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD K.Y. JUNG, ROYCE A. LEVIEN,
ROBERT W. LORD, MARK A. MALAMUD, JOHN D. RINALDO JR.,
CLARENCE T. TEGREENE, and LOWELL L. WOOD JR.
Appeal2014-004943
Application 12/287,719
Technology Center 2400
Before THU A. DANG, NORMAN H. BEAMER,
and JAMES W. DEJMEK, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-26. 1 We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b).
We affirm.
1 In the Appeal Brief, Appellants identify Searete, LLC, wholly owned by
Intellectual Ventures Management LLC, as the real party in interest. (App.
Br. 4.)
Appeal2014-004943
Application 12/287,719
THE INVENTION
Appellants' invention is directed to implementations for a security-
activated operational component. (Abstract.) Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for implementing authorization rights regarding
a security-controlled process, comprising:
obtaining access to an object data file configured to implement
the security controlled process that involves creating or
producing or duplicating or processing or testing one or
more objects;
further obtaining a digital rights management code that provides
access protection to the object data file;
determining that an aspect of the security-controlled process is
subject to a permission agreement having a predetermined
condition requiring qualitative or quantitative monitoring
of the security-controlled process; and
pursuant to processing the digital rights management code,
providing interaction \~1ith an operational component of
the security-controlled process in accordance with the
predetermined condition to enable or prevent activation of
the operational component.
REJECTIONS
The Examiner rejected claims 1-15, 18, 19, 21, 22, and 25 under 35
U.S.C. § 102(b) as being anticipated by Bentley et al. (US 2003/0217275
Al, pub. Nov. 20, 2003). (Final Act. 15-23.)
The Examiner rejected claim 16 under 35 U.S.C. § 103(a) as being
unpatentable over Bentley and Jacobson (US 2009/0137408 Al, pub. May
28, 2009). (Final Act. 24--25.)
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Application 12/287,719
The Examiner rejected claims 17, 20, 23, and 26 under 35 U.S.C.
§ 103(a) as being unpatentable over Bentley and Sachs et al. (US 5,204,055,
issued Apr. 20, 1993). (Final Act. 25-29.)
The Examiner rejected claim 24 under 35 U.S.C. § 103(a) as being
unpatentable over Bentley and Mott et al. (US 6, 170,060 B 1, issued Jan. 2,
2001). (Final Act. 29-30.)
ISSUES ON APPEAL
Appellants' arguments in the Appeal Brief present the following
issues: 2
Issue One: Whether Bentley discloses the independent claim 1
limitations, "obtaining access to an object data file configured to implement
the security-controlled process that involves creating or producing or
duplicating or processing or testing one or more objects; [and] determining
that an aspect of the security-controlled process is subject to a permission
agreement having a predetermined condition requiring qualitative or
quantitative monitoring of the security-controlled process." (App. Br. 13-
17.)
Issue Two: Whether Bentley discloses the independent claim 22
limitations, "a digital rights management code that is configured to control
an operational component involved in a functional operation to create or
produce or duplicate or process or test an object; [and] a verification module
2 Rather than reiterate the arguments of Appellants and positions of the
Examiner, we refer to the Appeal Brief (filed Oct. 15, 2013); Reply Brief
(filed Mar. 17, 2014); Final Office Action (mailed Mar. 15, 2013); and the
Examiner's Answer (mailed Jan. 16, 2014) for the respective details.
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Application 12/287,719
capable of interacting with the operational component to obtain monitoring
data regarding predetermined conditions required by a permission
agreement. ... " (App. Br. 18-22.)
Issue Three: Whether Bentley discloses the claim 3 limitation,
"determining that a functional aspect of the operational component is
dependent on an intellectual property provision or a third party ownership
provision of the permission agreement." (App. Br. 23-24.)
Issue Four: Whether the Examiner provides sufficient evidence of a
motivation to combine Bentley and Sachs. (App. Br. 25-30.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner has erred. We disagree with Appellants'
arguments: we adopt as our own (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken (Final Act. 15-30)
and (2) the reasons set forth by the Examiner in the Examiner's Answer in
response to Appellants' Appeal Brief (Ans. 3-28), and we concur with the
conclusions reached by the Examiner. We emphasize the following.
Issue One
For the claim 1 limitations at issue, the Examiner relies on the
disclosure in Bentley of a digital rights management system providing for an
author of design file used to create 2-D or 3-D models, such as a structural
drawing or electrical system of a house, to encrypt the file contents, and for
granting or denying access rights, such as viewing, exporting, or editing, to
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Application 12/287,719
the file based on a predetermined condition such as the recipient identity or
an expiration time. (Final Act. 15; Bentley Abstract, i-fi-15-9, 30, 32.)
Appellants argue if, as the Examiner finds, the "object data file" of the
claim is equated with the design file of Bentley, and the "security-controlled
process" of the claim is equated with the user gaining access to a design file,
then it is "unclear how the Patent Office views the 'design files' of Bentley
as implementing 'a user attempting to gain access to the design file."' (App.
Br. 15-16.) However, we are not persuaded by this argument.
As a threshold matter, we agree with the Examiner's equating the
design file with the object data file, and equating the user's access process
with the security-controlled process. (Final Act. 15.) We further agree with
the Examiner that the claim does not require the object file to "actually
perform[]/implement[] the security process." (Ans. 4--5.) The claim
requires "an object data file configured to implement the security-controlled
process." (Emphasis added.) We agree with the Examiner that the broadest
reasonable interpretation of this limitation encompasses the disclosure of
Bentley wherein the design file is "security-controlled" such that it "is
protected under a DRM [Digital Rights Management] system based on a set
of permissions granted by the owner of the file." (Ans. 5---6.)
Appellants also argue if, as the Examiner finds, the "object" of the
claim is equated with the models of a house disclosed in Bentley, then it is
"unclear how the Patent Office views ... 'a user attempting to gain access to
the design file' as involving 'creating or producing or duplicating or
processing or testing' a physical product created according to a 'design file'
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Application 12/287,719
of Bentley (e.g. a house)." (App. Br. 16.) We agree with the Examiner,
however:
[T]he claims do not recite that the object is limited to be a
physical product/object. ... the claims nowhere explicitly
define what the 'object' is. It appears to be an object/item that
is designed in the object data file. This could be a physical
object or some other object. ...
(Ans. 7.) Therefore, "[the] objects of Bentley can be any object designed in
the design file and are not limited to be a physical object." (Ans. 8.) We
further agree with the Examiner's findings:
Bentley teaches that these design files are sensitive (security-
controlled) and the rights to access a particular design file is
granted by the owner of the design file which teaches the
claimed "implement[ing] the security-controlled process that
involves creating or producing or duplicating or processing or
testing one or more objects." The operation the user is
attempting to access, such as printing the design file, is
considered as the claimed "security-controlled process." This
reads on the claim limitation in question.
(Ans. 9.)
Appellants further argue Bentley does not disclose the claimed
"permission agreement," because "Bentley actually teaches unilateral
specification of authorized 'recipients' and 'expiration times' by an 'author'
... and not through any mutual 'agreement' as required by Claim 1." (App.
Br. 17.) This argument is also unpersuasive-we agree with the Examiner,
"the claims do not recite any type of 'mutual' agreement." (Ans. 9.) We
also agree with the Examiner's finding:
Bentley's system of digital rights management of
allowing an author to set permissions for the design file is
consistent with the definition of "permission agreement" of the
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written description, and therefore, Bentley teaches the claimed
"permission agreement."
(Ans. 11.)
Issue Two
For the claim 22 limitations at issue, the Examiner also relies on the
disclosure in Bentley of a design file with access rights as described above.
(Final Act. 22.) Appellants again argue that Bentley does not disclose the
design file as involved in operations on a "physical product," and does not
disclose a "permission agreement." (App. Br. 21-22.) These arguments are
unpersuasive for the same reasons as discussed above.
Issue Three
Appellants' argument with respect to claim 3 again asserts that
Bentley does not disclose a "permission agreement." (App. Br. 24.) As
discussed above, we are unpersuaded by the argument.
Issue Four
Appellants argue, "[t]he Patent Office has not provided any objective
evidence of a reason or motivation to combine the technologies of Bentley
and Sachs." (App. Br. 25.) We are not persuaded the Examiner errs in
finding:
In this case, Bentley teaches using a CAD design file to
design a particular structure and protecting the design file from
unauthorized use. Bentley specifically discusses designing an
electrical structure of a house, but also generally describes a
design file as being used to create 2D and 3D precision models.
It is well-known in the art that CAD design files can be used to
design any type of structure or part that will later be created.
Sachs teaches taking a CAD design file and using it to create a
3D part using the additive manufacturing process. Therefore, it
would have been obvious to using the additive manufacturing
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process of Sachs to create a part that was designed and
protected as in Bentley. Furthermore, it would have been
obvious to have improved upon the teachings of Bentley by
adding the teachings of Sachs for the purpose of using a
machine to create the part that was designed in the CAD design
file. This would be automating the manual process of creating
the part and would have been an improvement over making the
part manually.
(Ans. 25.) In KSR, the Court stated "[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results." KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007). A reason to combine teachings from the prior art "may be found
in explicit or implicit teachings within the references themselves, from the
ordinary knowledge of those skilled in the art, or from the nature of the
problem to be solved." WMS Gaming Inc. v. Int'! Game Tech., 184 F.3d
1339, 1355 (Fed. Cir. 1999). Appellants have not demonstrated that the
Examiner's proffered combination of references would have been "uniquely
challenging or difficult for one of ordinary skill in the art." See Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
CONCLUSIONS
For the reasons discussed above, we sustain the anticipation rejection
of claims 1, 3, and 22 over Bentley, and the obviousness rejection of claims
17, 20, 23, and 26 over Bentley and Sachs.
We also sustain the anticipation rejection of claims 2, 4--15, 18, 19,
21, and 25 over Bentley, and the obviousness rejections of claim 16 over
Bentley and Jacobson and of claim 24 over Bentley and Mott, which
rejections are not argued separately with particularity.
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Application 12/287,719
DECISION
We affirm the Examiner's rejections of claims 1-26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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