Ex Parte Kumble

Patent Trial and Appeal Board

Jul 25, 2016

12913021 (P.T.A.B. Jul. 25, 2016)

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.
12/913,021 10/27/2010 Prashanth Nayak Kumble 2002-1310 / PS10 1998US1 3106
54472 7590 07/25/2016
COATS & BENNETT/SONY ERICSSON
1400 CRESCENT GREEN
SUITE 300
CARY, NC 27518
EXAMINER
MANGIALASCHI, TRACY
ART UNIT PAPER NUMBER
2668
MAIL DATE DELIVERY MODE
07/25/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PRASHANTH NAYAK KUMBLE
____________________

Appeal 2015-000221
Application 12/913,021
Technology Center 2600
____________________

Before CARL W. WHITEHEAD JR., JOHN F. HORVATH, and
ADAM J. PYONIN, Administrative Patent Judges.

PYONIN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–11, 13–23 and 25, which are all
pending claims. Brief 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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STATEMENT OF THE CASE
Introduction
Appellant’s disclosure is directed to “digital rights management
(DRM) domain recommendation and selection based on a user’s social
graphs.” Title. Claims 1 and 14 are independent. Claim 1 is reproduced
below for reference (with emphases added):
1. A method of creating a digital rights management (DRM)
domain for rendering protected multimedia content, the method
performed by a server device associated with a content provider
and comprising:
receiving a request for protected multimedia content from
a user;
determining one or more social networks to which the
user subscribes responsive to receiving the request;
obtaining information for each of the social networks, the
information identifying, within each respective social network,
one or more contacts connected to the user;
analyzing the information to determine one or more bins
of contacts based on a strength of the connections between the
user and each contact;
generating at least one DRM domain based on the one or
more bins;
recommending, to the user, one or more DRM domains,
each recommended domain identifying user devices associated
with the contacts grouped in one or more selected bins; and
assigning one or more user devices associated with one
or more of the contacts to the DRM domain.

References and Rejections
Claims 1–11, 13–23, and 25 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Grzonkowski (Grzonkowski, A DRM Solution
Based on Social Networks and Enabling the Idea of Fair Use, 2007), Farrell
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(US 2010/0161369 A1; June 24, 2010), Lunt (US 2006/0004789 A1; Jan. 5,
2006), and Baldwin (US 2009/0319603 A1; Dec. 24, 2009). Final Action 2.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. We adopt the Examiner’s findings and conclusions (see Final
Action 2–25; Advisory Action 2; Answer 26–45) as our own, and we add the
following primarily for emphasis.

A. Independent Claims
Appellant argues the Examiner erred in rejecting independent claim 1,
because neither Baldwin nor Grzonkowski:
teaches or suggests a server1 associated with a content provider
that “[recommends], to the user, one or more DRM domains,
each recommended domain identifying user devices associated
with the contacts grouped in one or more selected bins.” Nor
does either reference teach or suggest, “assigning one or more
user devices associated with one or more of the contacts to the
DRM domain.”
as required by the claim. Brief 11.
We are not persuaded the Examiner erred. During prosecution, claims
are given their broadest reasonable interpretation consistent with the
Specification as they would be understood by one of ordinary skill in the art.
See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004).

1We note “the method performed by a server device” is recited in the
preamble of claim 1. In the event of further prosecution, the Examiner may
wish to determine if this recitation deserves patentable weight, or whether it
“merely gives a descriptive name to the set of limitations in the body of the
claim that completely set forth the invention.” See IMS Tech., Inc. v. Haas
Automation, Inc., 206 F.3d 1422, 1434–35 (Fed.Cir.2000).
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“Moreover, limitations are not to be read into the claims from the
specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Here, the Examiner correctly finds the disputed limitations can be
construed as “present[ing] to the user / requester, one or more devices that
are authorized to render protected multimedia content, the one or more
devices associated with social network contacts of the user / requester”
(Answer 26), and “once the user selects friends / devices that can record or
share content on the device of the user . . . the device has . . . been identified
and assigned” (Answer 33), as “[t]he claim does not preclude the user from
manually selecting the one or more devices once the list of one or more
devices associated with social network contacts is presented” (Answer 31).
We find the Examiner’s claim construction to be reasonable in light of
Appellant’s Specification. See, e.g., Specification ¶¶ 3, 18, and 19.
Further, we agree with the Examiner that these limitations broadly but
reasonably encompass the combined teachings of the cited references, and
we find Appellant’s arguments unpersuasive for attacking the individual
teachings of the references rather than their combined teachings. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not . . .
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.”); see
also Answer 30, 34; Brief 12 (“both Grzonkowski and Baldwin, alone, fail
to teach or suggest the same two limitations . . . since all four (4) references
alone fail to teach or suggest the same limitation of claim 1, the combination
of those references necessarily fails to teach or suggest these limitations.”).
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Therefore, we are not persuaded the Examiner erred in finding the
combination of cited references, including Grzonkowski which teaches “a
DRM system . . . using a rights expression language that uses constraints
based on relationships between users and their friendship level” (Answer
27), and Baldwin which teaches that “users of a social network website can
configure settings on the social network website to allow or authorize other
people in their social network to record content on their device” (Answer
29), teaches or suggests the disputed limitations of claim 1.2 See Answer 27,
34; see also Grzonkowski 5; Baldwin Figures 2–4, ¶¶ 44–45. Rather, we
find the Examiner has shown “the subject matter as a whole would have
been obvious at the time the invention was made to a person having ordinary
skill in the art to which said subject matter pertains.”’ KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 406 (2007)); see also id. at 418 (“[T]he analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”).
Accordingly, we sustain the Examiner’s rejection of independent
claim 1 and independent claim 14 which recites limitations commensurate in
scope. See Brief 12.

2 Separately, we note Appellant’s arguments refer to the manual actions
taught by the references. See, e.g., Brief 11 (“manual selection performed
by a user does not teach or suggest the recommendation of a DRM
domain.”). Broadly providing an automatic way to replace a manual activity
accomplishing the same result, however, is not sufficient to distinguish over
the prior art. See In re Venner, 262 F.2d 91, 95 (CCPA 1958).
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B. Dependent Claims
Appellant argues the Examiner erred in rejecting dependent claim 6,
because, “[s]ince Lunt operates with only a single social network, Lunt
cannot possibly group the contacts within a single social graph generated
from a plurality of networks,” as claimed. Brief 13. We note, however, that
the “combination of Farrell and Lunt were cited for these limitations”
(Answer 35), and Appellant does not persuade us the Examiner erred by
relying on this combination. See Answer 34–36 (citing Farrell Figure 1, ¶¶
36–40; Lunt Figure 3, ¶ 18). Accordingly, we sustain the Examiner’s
rejection of dependent claim 6.
Appellant argues the Examiner erred in rejecting dependent claims 10,
11, 22, and 23 as obvious in view of Farrell and the other cited references,
because the “cited passages of Farrell say nothing with respect to the
creation of a bin,” as required by claims 10 and 22 (Brief 14), and “Farrell
does not teach or suggest comparing the weighted connections to a
predetermined threshold to determine which bin that the contact should be
placed into,” as required by claims 11 and 23 (Brief 16). We are not
persuaded the Examiner erred. Rather, we agree with the Examiner that
Farrell reasonably teaches creating bins3 and comparing the weight value of
connections to group contacts into a corresponding bin, within the meaning

3 Additionally, the Examiner correctly notes that “[c]laims 10 and 22 recite a
conditional limitation that might not ever occur.” Answer 37. See Applera
Corp. v. Illumina, Inc., 375 Fed. Appx. 12, 21 (Fed. Cir. 2010)
(unpublished); Cybersettle, Inc. v. Nat'l Arbitration Forum, Inc., 243 Fed.
Appx. 603, 607 (Fed. Cir. 2007) (unpublished) (“It is of course true that
method steps may be contingent. If the condition for performing a
contingent step is not satisfied, the performance recited by the step need not
be carried out in order for the claimed method to be performed.”).
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of the claims. See Answer 37–41; see also Farrell Figures 1, 4D, 5, ¶¶ 56–
58, 88–91, 96, and 98 (describing grouping and sorting based on thresholds).
Appellant further argues the Examiner erred in rejecting dependent
claims 13 and 25, because neither Grzonkowski nor Baldwin “teach[es] or
suggest[s], ‘selecting a device to assign to the DRM domain to render the
multimedia content, wherein the selected device comprises a device
associated with a contact grouped into one or more selected bins,’ as claimed
in claim 1[3].” Brief 17. We are not persuaded of Examiner error, for the
reasons discussed above with respect to claim 1, and because Appellant’s
arguments attack each reference separately, whereas the Examiner finds “the
combination of references” teaches or suggests the disputed limitations.
Answer 45; see also Answer 44 (citing Baldwin Figures 2–4; Grzonkowski
pages 5–7). Accordingly, we sustain the examiner’s rejection of dependent
claims 13 and 25.

CONCLUSION
We sustain the Examiner’s rejection of independent claims 1 and 14,
and dependent claims 6, 10, 11, 13, 22, 23, and 25. Appellant advances no
further argument on the remaining dependent claims. Accordingly, we
sustain the Examiner’s rejection of these claims for the same reasons
discussed above.

DECISION
The Examiner’s rejection of claims 1–11, 13–23, and 25 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)(1)(iv).
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AFFIRMED