Ex Parte Smith et al

Patent Trial and Appeal Board

Dec 7, 2015

11639788 (P.T.A.B. Dec. 7, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/639,788 12/15/2006
7590
Patrick S, Yoder
FLETCHER YODER
P.O. Box 692289
Houston, TX 77269-2289
12/08/2015
FIRST NAMED INVENTOR
William David Smith II
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.
207272-3/YOD
NBCU:0004
EXAMINER
WU,RUTAO
7722
ART UNIT PAPER NUMBER
3621
MAILDATE DELIVERY MODE
12/08/2015 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 WILLIAM DAVID SMITH II,
MARK RICHARD GILDER,
VIRGINIA ANN ZINGELEWICZ,
and WILLIAM MANDEL
Appeal2013-004292
Application 11/639,788
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
BRADLEY B. BAY AT, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
William David Smith II, Mark Richard Gilder, Virginia Ann
Zingelewicz, and William Mandel (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1-26, the only claims pending
1 Our decision makes reference to the Appellants' Appeal Brief ("App. Br.,"
filed April 23, 2012) and Reply Brief ("Reply Br.," filed February 4, 2013),
and the Examiner's Answer ("Ans.," mailed December 4, 2012), and Final
Office Action ("Final Act." mailed December 13, 2011 ).
Appeal2013-004292
Application 11/639,788
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
The Appellants invented "a digital right management technique that
allows for flexibility in the sustained or continued use of copies of digital
content between updating or synchronization sessions with a content
provider." Specification para. 1.
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 permitting access to digital content
compnsmg:
[ 1] permitting,
and
via a processor,
creation of a first copy of the digital content by a user
in accordance with a [Digital Rights Management
("DRM")] scheme;
[2] permitting
via the processor,
creation of a temporary float copy of the digital content
when
the processor cannot delete or disable the
first copy
and
creation of an additional non-float copy
would exceed a number of non-float copies
allowable by the DRM scheme.
App. Br. 27 (Claims App.)
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Appeal2013-004292
Application 11/639,788
The Examiner relies upon the following prior art:
Wyman US 5,260,999
Berstis US 6,282,653 B 1
Stefik US 6,895,392 B2
Nov. 9, 1993
Aug. 28, 2001
May 17, 2005
RON WHITE, How SOFTWARE WORKS (1993) (hereinafter "White").
PRESTON GRALLA, How THE INTERNET WORKS (Setphanie J. McComb et
al. eds., 8th ed. 2006) (hereinafter "HtIW-8").
PRESTON GRALLA, How THE INTERNET WORKS (Setphanie J. McComb et
al. eds., 6th ed., 2001) (hereinafter "HtIW-6").
Claims 1-26 stand rejected under 35 U.S.C. § 112, first paragraph, as
lacking a supporting written description within the original disclosure.
Claims 1-26 stand rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the
invention.
Claims 1-26 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Berstis.
Claims 1-26 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Wyman.
Claims 1-26 stand rejected under 35 U.S.C. § 102(b) as anticipated by
HtIW-8 and Official Notice.
Claims 14--26 stand rejected under 35 U.S.C. § 102(b) as anticipated by
White.
Claims 1-26 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Berstis and HtIW-8.
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Appeal2013-004292
Application 11/639,788
Claims 1----26 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Wyman and Stefik.
Claims 1-26 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over HtIW-8, HtIW-6, and White, and Official Notice.
ISSUES
The issue of written description turns primarily on whether the
Specification describes making a float copy when off-line and the processor
cannot delete or disable the first copy.
The issue of definiteness turns primarily on whether the Appellants
adequately respond to the Examiner's need for clarification and on whether
the Specification and drawings support the recited means plus function
limitations.
The issues of anticipation and obviousness tum primarily on whether the
Examiner finds the art described the limitation of the processor not being
able to delete or disable the first copy.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
0 I .A float copy is a copy in excess of a permitted number. Spec.
para. 51.
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Application 11/639,788
Facts Related to Appellants' Disclosure
02. Specification paragraphs 4 and 5 describe prior art of requiring
deleting or disabling copies, not the current invention of
determining when this cannot be done as recited in the claims.
03. Specification paragraph 50 recites an interesting aspect in the prior
art of the user's experience becoming "extremely frustrating when
the DRM scheme precludes transmission or copying from one
user device to another simply because the user is not or cannot be
on-line to authorize or to obtain authorization of such transfers, or
because other copies on other devices have not yet been deleted or
otherwise disabled." This describes the prior art of deleting or
disabling copies, not the current invention of determining when
this cannot be done as recited in the claims.
04. Specification paragraph 54 recites having to remove or disable
content.
OS.Specification paragraph 55 recites having to remove or disable a
license rather than content per se.
06. Specification paragraph 59 recites removing device listings from a
license.
07.Specification paragraph 67 recites "allow[ing] the user to make
additional copies beyond the number otherwise allowed, such as
to load content onto other devices, although other active copies
have not yet been removed or disabled." The paragraph does not
describe allowing so when other active copies cannot be removed
or disabled.
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Application 11/639,788
08.Specification paragraphs 76 recites needing to remove copies.
09. Specification paragraphs 80 and 81 recite how removal is
implemented.
10. Specification paragraph 90 recites removing the ability to acquire
licenses.
Facts Related to the Prior Art
Berstis
11.Berstis is directed to "managing collection of royalties for
electronically-published material distributed over a computer
network." Berstis 1:7-9.
12.Berstis describes "enabl[ing] a pair of certified devices (e.g., a
storage device and a rendering device) to operate within the
context of a given security protocol and thereby manage copies of
a digital file and associated copy control information." Berstis
2:37--41.
13. Berstis describes:
managing copies of a digital file, which includes content
subject to copyright protection, on behalf of some content
provider." "In a prepayment option, a user prepays funds
for the right to obtain copies of the digital file .... In a pay-
per-copy (or "pay as you go") option, the user pays for each
copy of the digital file when the file is copied. In an
[Input/Output Unit ("IOU")] scheme, the user makes copies
of the digital file (e.g., while the client machine is not
connected to the network) and generates an IOU (or many
IOUs) that are then submitted to a clearinghouse or other
payment entity when the user later goes online.
Berstis 5:32-50.
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Appeal2013-004292
Application 11/639,788
14.Berstis describes:
[a] payment scheme ... preferably defined in copy control
information associated with a file and established by the
author, publisher or some other third party. Thus, for
example, the copy control information may also include a
count of the number of permitted copies, a count of the
number of permitted pay-per-copy versions, a count of the
number of copies that may be made under an IOU payment
option, copyright management information identifying the
author, publisher and/or other license or use restrictions,
information about a bank or other financial institution that
handles use payments and their reconciliation, one or more
expiration dates (after which copying is no longer
permitted).
Berstis 5:51---63.
Wyman
15. Wyman is directed to "managing the licensing of software
executed on computer systems." Wyman, 1:23-26.
HtIW-8 and HtIW-6
16.HtIW-8 and HtIW-6 are directed to a broad description of how
common Internet applications work. See Titles.
White
1 7. White is directed to a broad description of how common software
works. White Title.
Stefik
18. Stefik is directed to distribution and usage rights enforcement for
digitally encoded works and more specifically to the use of a
grammar for creating usage rights. Stefik 1: 15-18.
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Application 11/639,788
ANALYSIS
Claims 1-26 rejected under 35 USC§ 112,first paragraph, as lacking a
supporting written description within the original disclosure
The Examiner rejects the claims upon a finding that the Specification
only describes making a float copy when off-line and in particular does not
support permitting via the processor, creation of a temporary float copy of
the digital content "when the processor cannot delete or disable" the first
copy. 2 We are not persuaded by the Appellants' argument that Specification
paragraphs 4, 5, and 50 support this limitation. Each of these Specification
recitations describes prior art and not the operation of the invention recited
in the claims. It is not enough merely to show the prior art might suggest a
context for the limitation. See Lockwood v. Am. Airlines, 107 F.3d 1565,
1571-72 (Fed. Cir. 1997) (a description that merely renders the invention
obvious does not satisfy the requirement).
Further, although there is support for permitting when the first copy is
not deleted or disabled per se, there is no description of this being because or
when the processor cannot delete or disable a copy. Indeed, among the most
primitive functions in any file system is that of deletion, so it would be
unusual if the Specification did support this limitation. The claims do not
recite or narrow the context in which such inability to delete or disable
occurs, so the limitation must mean complete and total inability. We do not
find support for this limitation among any of the Specification's recitals of
removal or disabling. FF 02-10.
2 This limitation was added in an amendment filed September 15, 2011.
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Application 11/639,788
All independent claims share a similar limitation.
Claims 1-26 rejected under 35 US.C. § 112, second paragraph, as failing
to particularly point out and distinctly claim the invention
As to claim 1, we are persuaded by the Appellants' argument that
sufficient clarification to the Examiner's queries are provided at Appeal
Brief, pages 12-14.
As to the means plus function limitations in claims 21-24, we are
persuaded by the Appellants' argument that Figures 18 and 19 show
sufficient structure to support these limitations.
Claims 1-26 rejected under 35 US.C. § 102(b) as anticipated by Berstis
We are persuaded by the Appellants' argument that the Examiner fails to
present a prima facie case because no finding is made of the limitation that
processor permits "creation of a temporary float copy of the digital content
when the processor cannot delete or disable the first copy and creation of an
additional non-float copy would exceed a number of non-float copies
allowable by the DRM scheme," as recited in claim 1.
The Examiner finds that Berstis describes an IOU scheme permitting
creating of a float copy when the creation of an additional non-float copy
would exceed a number of non-float copies allowable. This is arguably true.
See FF 13 and 14. But the Examiner makes no finding this is done when the
processor cannot delete or disable a first copy. Indeed, under Berstis there
is no reason associated with digital rights management to delete or disable a
first copy, as the IOU system allows an expanding number of copies.
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Appeal2013-004292
Application 11/639,788
The issue under anticipation is whether the art describes all of the
limitations. It is unclear how the Examiner finds that this step is not
positively recited, as the limitation begins with the word "permitting." This
limitation performs the step of permitting what follows.
Claims 1-26 rejected under 35 USC§ 102(b) as anticipated by Wyman
We are persuaded by the Appellants' argument that the Examiner fails to
present a prima facie case because no finding was made of the limitation that
processor permits "creation of a temporary float copy of the digital content
when the processor cannot delete or disable the first copy and creation of an
additional non-float copy would exceed a number of non-float copies
allowable by the DRM scheme," as recited in claim 1. The Examiner cites
Wyman Figure 1 and posits the creation and removal of licenses in the figure
without citing any support in Wyman's specification. Even granting such,
however, this would not meet the claim limitation. Examiner again bases
the absence of a finding on lack of written description support. Ans. 12-13.
Claims 1-26 rejected under 35 USC§ 102(b) as anticipated by Ht!W-8
and Official Notice
Claims 14-26 rejected under 35 USC§ 102(b) as anticipated by White
Claims 1-26 rejected under 35 USC§ 103(a) as unpatentable over Berstis
andHtIW-8
We are persuaded by the Appellants' argument that the Examiner fails to
present a prima facie case because no finding was made of the limitation that
processor permits "creation of a temporary float copy of the digital content
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Appeal2013-004292
Application 11/639,788
when the processor cannot delete or disable the first copy and creation of an
additional non-float copy would exceed a number of non-float copies
allowable by the DRM scheme," as recited in claim 1.
The Examiner finds that the claim limitations described the operation of
copyright laws and cited each of these references as generic descriptions of
file copying. Again, such a finding does not address the limitation at issue.
Claims 1-26 rejected under 35 US.C. § 103(a) as unpatentable over Wyman
and Stefik
Claims 1-26 rejected under 35 US.C. § 103(a) as unpatentable over Ht!W-
8, Ht!W-6, White, and Office Notice
We are persuaded by the Appellants' argument that the Examiner fails to
present a prima facie case because no finding was made of the limitation that
processor permits "creation of a temporary float copy of the digital content
when the processor cannot delete or disable the first copy and creation of an
additional non-float copy would exceed a number of non-float copies
allowable by the DRM scheme," as recited in claim 1.
The Examiner combined the reasoning from the anticipation rejections
around each reference. Such combined reasoning still does not address the
limitation at issue.
CONCLUSIONS OF LAW
The rejection of claims 1-26 under 35 U.S.C. § 112, first paragraph, as
lacking a supporting written description within the original disclosure is
proper.
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Application 11/639,788
The rejection of claims 1----26 under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the invention is
improper.
The rejection of claims 1-26 under 35 U.S.C. § 102(b) as anticipated by
Berstis is improper.
The rejection of claims 1-26 under 35 U.S.C. § 102(b) as anticipated by
Wyman is improper.
The rejection of claims 1-26 under 35 U.S.C. § 102(b) as anticipated by
HtIW-8 and Official Notice is improper.
The rejection of claims 14--26 under 35 U.S.C. § 102(b) as anticipated
by White is improper.
The rejection of claims 1-26 under 35 U.S.C. § 103(a) as unpatentable
over Berstis and HtIW-8 is improper.
The rejection of claims 1-26 under 35 U.S.C. § 103(a) as unpatentable
over Wyman and Stefik is improper.
The rejection of claims 1-26 under 35 U.S.C. § 103(a) as unpatentable
over HtIW-8, HtIW-6, White, and Official Notiec is improper.
DECISION
The rejection of claims 1-26 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).
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Appeal2013-004292
Application 11/639,788
llw_
AFFIRl\tIED
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