Ex Parte Klum et al

Patent Trial and Appeal Board

Oct 19, 2016

13075674 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/075,674
138517 7590
Pederson IP, LLC
P.O. Box 733
Willernie, MN 55090
03/30/2011
10/21/2016
FIRST NAMED INVENTOR
R. Daren Klum
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.
CRAM-002us01 2164
EXAMINER
REAGAN, JAMES A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
10/21/2016 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):
aaron@pedersonip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte R. DAREN KLUM,
MATTHEW D. FAIRCHILD,
KEITH A. PAGAN,
and DANIEL L. HENCH
Appeal2014--002785
Application 13/075,674 1
Technology Center 3600
Before ANTON W. PETTING, BART A. GERSTENBLITH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants indicate that "Cram Worldwide, LLC" is the real party in
interest. App. Br. 1.
Appeal2014-002785
Application 13/075,674
STATEl\tIENT OF THE CASE2
R. Daren Klmn, Matthew D. Fairchild, Keith A. Pagan, and Daniel L.
Hench (Appellants) seek review under 35 U.S.C. § 134 of a final rejection of
claims 1-10 and 12-20, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
Appellants invented a way of securely delivering individualized,
digital content, in certain examples large quantities of content (e.g.,
terabytes, etc.), to a plurality of users. Spec. 9:2-5.
Claims 1, 10, and 18 are the independent claims on appeal. An
understanding of the invention can be derived from a reading of exemplary
claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method for protecting digital content at a kiosk, the
method comprising:
[ 1] providing a memory device having digital content thereon;
[2] receiving an indication of a dock
to which the memory device is to be coupled,
the indication received from a user accessing the kiosk;
and
[3] protecting the memory device with a unique key,
wherein the unique key corresponds to the dock.
2 Our decision will make reference to Appellants' Appeal Brief ("App. Br.,"
filed September 4, 2013) and Reply Brief ("Reply Br.," filed December 19,
2013), and the Examiner's Answer ("Ans.," mailed October 24, 2013) and
Final Action ("Final Act.," mailed November 29, 2012).
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Application 13/075,674
The Examiner relies upon the following prior art:
Phillips US 2008/0235144 Al
Ronen US 2011/0029435 Al
Sept. 25, 2008
Feb. 3, 2011
Appellants appeal the following rejections:
Claims 1-10 and 12-20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ronen and Phillips.
Claims 1-10 and 12-20 stand provisionally rejected under the
judicially created doctrine of obviousness-type double patenting as claiming
patentably indistinguishable subject matter as another U.S. Patent
Application.
ISSUES
The issues of obviousness tum primarily on the breadth of the
independent claims and \vhether their scope encompasses the prior art.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are supported by a
preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of "dock."
02. The plain meaning of a dock in a computer context is a device
in which a laptop computer, smartphone, or other mobile device
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Application 13/075,674
may be placed for charging, providing access to a power supply
and to peripheral devices or auxiliary features; a docking station. 3
Facts Related to Appellants' Disclosure
03. All recitations of a "dock" in the Specification refer to
examples and not to definitional statements regarding a dock.
Facts Related to the Prior Art
Ronen
04. Ronen is directed to a system for distributing electronic content.
Ron en para. 8.
05. Ronen describes purchasing electronic content from an online
store by selecting electronic content items that the end user wants
to purchase. To finalize the purchase, an end user may connect
his or her end user device to a kiosk that includes a dock or port to
connect to the kiosk. vVhen an end user docks his or her end user
device, the kiosk may automatically load the electronic content
that the end user selected to purchase. The kiosk may provide the
option of completing or editing the end user's purchase. Ronen
paras. 89-91.
Phillips
06. Phillips is directed to a proximity payment device embodied as
a wristwatch. Phillips, Abstract.
3 http://www.oxforddictionaries.com/us/definition/american_english/dock
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Application 13/075,674
07. Phillips describes secure communication techniques, such as
public key encryption and/or digital signatures, employed to
prevent forgery of authentication information. The user's
payment account number and/ or a unique identifier for the
docking station may be used to generate the authentication
information. Phillips para. 68.
ANALYSIS
Claims 1-10 and 12-20 rejected under 35 US.C. § 103(a) as unpatentable
over Ronen and Phillips
As to claim 1, we are not persuaded by Appellants' argument that the
references fail to describe a dock. App. Br. 7-10. Ronen explicitly refers to
its kiosk as having a dock. Appellants contend the dock in Ronen is not as
defined in the Specification, but we find no lexicographic definition
anywhere in the disclosure. The claim recites that the dock is something to
which the memory device is to be coupled, i.e. a device for docking as in
Ron en.
We are not persuaded by Appellants' argument that the art fails to
describe receiving an indication of a dock. App. Br. 10. As no
implementation for such a reception is recited, the typical system discovery
(information reception) of electrical connection being made when a memory
device is plugged into a dock (plug and play) is within the scope of the
claim. This is familiar to anyone who has used a photo kiosk in the last
fifteen years, and so is within the knowledge of one of ordinary skill. More
to the point, as the Examiner finds, Ronen describes the kiosk automatically
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Application 13/075,674
loading the electronic content when an end user docks an end user device.
This automation necessarily requires receiving a signal to enable the loading.
To the extent Appellants argue that this merely signals a dock is ready as
contrasted with a dock being identified, claim 1 does not narrow the
interpretation of the indication. To the extent Appellants take issue with the
claim recitation of "received from a user," again, in the absence of a recited
implementation, any implementation is within the scope of the claim.
Ronen's user docking the device is an action from the user signaling the use
of a particular dock.
We are not persuaded by Appellants' argument that "[a ]lthough
Phillips discloses a docking station having a unique identifier, mere disclose
of such a docking station for a proximity payment device does not disclose
'protecting the memory device with a unique key, wherein the unique key
corresponds to the dock."' App. Br. 10. As Appellants admit, Phillips'
identifier corresponds to the dock. Claim 1 does not narrow what the
meaning of "protecting" is. Phillips' generating the authentication
information is a form of protection as authentication is a well-known step in
data protection.
We are not persuaded by Appellants' argument that one would not
modify the references to achieve the claimed invention because the dock
would have to be the dock used in Phillips. App. Br. 11. "The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference .... Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413,
425 (CCPA 1981). See also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.
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Application 13/075,674
1983) ("[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review."); In re
Nievelt, 482 F.2d 965, 968 (CCPA 1973) ("Combining the teachings of
references does not involve an ability to combine their specific structures.").
The Examiner finds that Phillips describes why one of ordinary skill would
have provided an authentication key for Ronen. Authentication protects
more than just an interface, it also protects the data that would pass through
that interface, and so would be applicable to Ronen.
Appellants repeat these arguments in support of the remaining
independent claims 10 and 18 and they are equally unpersuasive here. As to
the dependent claims separately argued, we adopt the Examiner's findings
and analysis and reach similar legal conclusions.
Claims 1-10 and 12-20 provisionally rejected under the judicially created
doctrine of obviousness-type double patenting as claiming patentably
indistinguishable subject matter as another US. Patent Application
As the rejection over art is dispositive and this rejection is provisional,
we do not reach this rejection.
CONCLUSIONS OF LAW
The rejection of claims 1-10 and 12-20 under 35 U.S.C. § 103(a) as
unpatentable over Ronen and Phillips is proper.
The provisional rejection of claims 1-10 and 12-20 under the
judicially created doctrine of obviousness-type double patenting as claiming
patentably indistinguishable subject matter as another U.S. Patent
Application is not reached.
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uECISION
The Examiner's decision rejecting claims 1-10 and 12-20 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)(l)(iv) (2011).
AFFIRMED
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