Ex Parte Pradhan et al

Patent Trial and Appeal Board

Jan 15, 2013

10428810 (P.T.A.B. Jan. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte SALIL PRADHAN,
CHRISTOPHE GOUGUENHEIM, and BILL SERRA
____________________

Appeal 2011-005594
Application 10/428,810
Technology Center 3600
____________________

Before: BIBHU R. MOHANTY, MICHAEL W. KIM, and NINA L.
MEDLOCK, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005594
Application 10/428,810

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STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 3-12, 14-18, 22-28, and 30-371. We
have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.

BACKGROUND
Appellants’ invention is directed to a method and system for
exchanging digital media (Specification 1:2-4).
Claim 12 is illustrative:
12. A system for exchanging digital media comprising:
a media card wherein the media card includes a memory
portion and a digital token, the digital token being used to
exchange for access rights for a plurality of different media;
a first device coupled to the media card, wherein the first
device includes:
a first mechanism for accessing the memory
portion of the media card; and
a memory component wherein the memory
component includes at least one access right to a specific
media; and
a second device containing the specific media and
coupled to the media card, wherein the second device includes a
second mechanism for accessing the memory portion of the
media card,

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed August 10, 2010) and Reply Brief (“Reply Br.,” filed January 3,
2011), and the Examiner’s Answer (“Ans.,” mailed November 2, 2010).
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wherein the first device is configured to transmit the at
least one access right to the media card based upon the media
card transmitting the digital token to the first device;
wherein the media card is configured to store the at least
one access right from the first device in its memory portion; and
wherein the second mechanism of the second device is
configured to utilize the at least one access right stored in the
memory portion of the media card to access the specific media.

REFERENCES
Hori US 2002/0138442 A1 Sep. 26, 2002
Maruyama US 2003/0037006 A1 Feb. 20, 2003
de Jong US 2003/0140230 A1 Jul. 24, 2003

REJECTIONS
The Examiner has rejected under 35 U.S.C. § 103(a):
claims 12 and 14-18 as unpatentable over de Jong;
claims 1, 3-9, 11, 22, 24-26, 28 and 30-34 as unpatentable over de
Jong and Hori;
claims 10, 27, 35 and 37 as unpatentable over de Jong, Hori and
Maruyama; and
claim 36 as unpatentable over de Jong and Maruyama.

ISSUES
Did the Examiner err in asserting that de Jong renders obvious
independent claim 12?
Did the Examiner err in asserting that de Jong renders obvious
dependent claims 16 and 17?
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Application 10/428,810

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Did the Examiner err in asserting that a combination of de Jong and
Hori renders obvious independent claims 1, 22, and 28?

FINDINGS OF FACT
de Jong
FF1. It is possible to load data and software onto a smart card over
the data communications network 3345 using card equipped devices.
Downloads of this nature can include applets or other programs to be loaded
onto a smart card as well as profile data, digital cash and other information
used in accordance with a variety of electronic commerce and other
applications (para. [0177]).
FF2. An exemplary use of a locker mechanism is as follows: A user
shops a vendor Web site and purchases the rights to listen to a selection of
music tracks for a year. A set of rights key credentials is used to store the
rights purchased by the user and the rights keys are used later to access the
resource(s) directly (para. [0213]).

ANALYSIS
Independent Claim 12
We are not persuaded the Examiner erred in asserting that de Jong
renders obvious independent claim 12 (App. Br. 9-13; Reply Br. 4-7).
Appellants assert that de Jong does not disclose or suggest “a media card
wherein the media card includes a memory portion and a digital token, the
digital token being used to exchange for access rights for a plurality of
different media,” as recited in independent claim 12, because de Jong
discloses exchanging rights keys for resources, and not digital tokens for
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access rights, as claimed (App. Br. 11-12; Reply Br. 4-5). However, de Jong
discloses that a smart card can include both digital cash and “other
information used in accordance with a variety of electronic commerce”
(FF1), where the “other information” can include “[a] set of rights key
credentials… purchased by the user and… used later to access the
resource(s) directly” (FF2). The Examiner then asserts that “[a] reasonable
obvious inference therefore is that De Jong uses the digital cash contained in
the smartcard while shopping on the vendor’s web site to exchange for the
rights keys downloaded and stored in the smartcard” (Ans. 13).
Accordingly, de Jong at least suggests exchanging digital cash for rights key
credentials.
Appellants then assert that de Jong does not disclose or suggest
“wherein the first device is configured to transmit the at least one access
right to the media card based upon the media card transmitting the digital
token to the first device,” as recited in independent claim 12, because (a) the
Examiner has not identified the first device in paragraph [0177] of de Jong,
(b) paragraph [0177] only discloses downloading profile data and digital
cash to the smart card, and not access rights, and (c) the profile data and
digital cash are not downloaded in response to transmitting rights keys in de
Jong (App. Br. 11-12). For (a), the card equipped devices that load data and
software onto a smart card (FF1) correspond to the recited first device. For
(b), de Jong discloses downloading other information to the smart card
(FF1), which would include the rights key credentials disclosed at paragraph
[0213] (FF2). And for (c), as set forth above, de Jong at least suggests
exchanging digital cash for rights key credentials.
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Appellants further assert that card reader 3324 of de Jong cannot
correspond to the recited first device, because “the rights keys are stored in
the smart card 3340, and not in the card reader 3324” (Reply Br. 5-6).
However, since card reader 3324 uploads “other information,” which can
include rights key credentials, to smart card 3340, de Jong at least suggests
that rights key credentials reside on card reader 3324.
Appellants additionally assert that de Jong does not disclose or
suggest
a second device containing the specific media and
coupled to the media card, wherein the second device includes a
second mechanism for accessing the memory portion of the
media card,… wherein the second mechanism of the second
device is configured to utilize the at least one access right
stored in the media card to access the specific media,
as recited in independent claim 12, because “computer 3322 is not a device
that contains specific media that can be accessed by the rights keys stored in
the smart card” (App. Br. 12-13). However, the Examiner cites server 3347
as corresponding to the recited second device (Ans. 13-14). Appellants then
assert that server 3347 cannot be the recited second device because (a)
server 3347 does not have “a second mechanism for accessing the memory
portion of the media card,” and (b) “the server 3347 in De Jong provides the
resources or music tracks requested by the user, without utilizing the rights
keys stored in the smart card 3340 to access any specific media” (Reply Br.
6-7). For (a), de Jong at least suggests considering computer 3322, which is
equipped with card reader 3324, part of the same device as server 3347. For
(b), de Jong discloses that “rights keys are used later to access the
resource(s) directly” (FF2), at least suggesting the exchange of rights key
credentials and resources between smart card 3240 and server 3347.
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Dependent Claims 16 and 17
We are not persuaded the Examiner erred in asserting that de Jong
renders obvious dependent claims 16 and 17 (App. Br. 13-14). We agree
with and adopt the Examiner’s findings and rationales, as set forth on pages
14-15 of the Examiner’s Answer.

Independent Claims 1, 22, and 28
We are not persuaded the Examiner erred in asserting that a
combination of de Jong and Hori renders obvious independent claims 1, 22,
and 28 (App. Br. 14-17; Reply Br. 7-8). Appellants rely on their arguments
concerning independent claim 12, with the added caveat that Hori does not
remedy those deficiencies of independent claim 12. However, because de
Jong is not deficient in rendering obvious independent claim 12, for the
reasons set forth above, we sustain these rejections.

Other Dependent Claims
Appellants rely on the aforementioned arguments concerning
independent claim 12 in asserting that the Examiner’s rejections of all
remaining dependent claims was improper (App. Br. 18-20; Reply Br. 7-8).
As we are unpersuaded of Examiner error concerning the propriety of
rejecting independent claim 12, we sustain these rejections as well.

DECISION
The rejection of claims 1, 3-12, 14-18, 22-28, and 30-37 under 35
U.S.C. § 103(a) is AFFIRMED.
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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)(1)(iv).

AFFIRMED

mls