Christian Kraft et al.

Patent Trials and Appeals Board

Dec 15, 2020

2020003461 (P.T.A.B. Dec. 15, 2020)

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.
12/256,943 10/23/2008 Christian Rossing Kraft NC65320-US-PAT 6161
100809 7590 12/15/2020
Conversant Wireless Licensing Ltd.
5830 Granite Parkway #100-247
Suite 247
Plano, TX 75024
EXAMINER
COPPOLA, JACOB C
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
12/15/2020 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):
ipadmin-core@conversant-wireless.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CHRISTIAN ROSSING KRAFT, and
JOAKIM CHRISTOFFERSSON
____________

Appeal 2020-003461
Application 12/256,943
Technology Center 3600
____________

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

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1, 3, 6, 11, 13, and 16. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Conversant Wireless Licensing S.a.r.l., as the
real party in interest. Appeal Br. 1.
Appeal 2020-003461
Application 12/256,943

2

CLAIMED SUBJECT MATTER
The Appellants’ claimed invention relates to a method and apparatus
for transferring media. Spec. ¶ 1. Claim 11, reproduced below, is
representative of the subject matter on appeal.

11. A method comprising:

receiving, at a user interface of a first device, a user
selection indicating a new media;

receiving, at the user interface of the first device, a user
selection indicating a disabling of a digital rights management
(DRM) right associated with an existing media for the first
device;

responsive to the received user selection indicating
disabling of the DRM right associated with an existing media
for the first device, disabling that DRM right;

responsive to the disabling of the DRM right, receiving
and storing a credit at the first device;

then forming a message for communication, the message
comprising an identifier of the selected new media and the
stored credit;

transmitting the message from the first device to a server;
and

receiving the selected new media, for which a DRM right
associated with the selected new media, as received, is activated
for the first device.

Appeal 2020-003461
Application 12/256,943

3

THE REJECTION
The following rejection is before us for review:
Claims 1, 3, 6, 11, 13, and 16 are rejected under 35 U.S.C. § 103 as
unpatentable over Royle et al. (WO 02/37315 A1; published May 10, 2002,
hereinafter “Royle”), Claus (US 5,461,217; issued Oct. 24, 1995), and
Poltorak (US 2007/0192207 A1; published Aug. 16, 2007).

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2

ANALYSIS
The Appellant argues that the rejection of claim 11 is improper
because the prior art fails to disclose the claim limitations for “responsive to
the disabling of the DRM right, receiving and storing a credit at the first
device” and “then forming a message . . . comprising an identifier of the
selected new media and the stored credit; [and] transmitting the message” as
claimed. Appeal Br. 4–7; Reply Br. 4–6. The Appellant also argues that the
combination of the references cited in the rejection would not have rendered
claim 11 obvious. App. Br. 8.
In contrast, the Examiner has determined that the rejection of record is
proper. Final Action 2–4; Ans. 3–7. The Examiner has determined that the
argued claim limitations are shown by Royle at 7:7–26; Claus at 2:33–57,

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2020-003461
Application 12/256,943

4

4:60–5:18, 7:7–18, 10:64–11:53, Figures 6, 7; and Poltorak ¶¶ 149, 151, and
152. Final Act. 2–4; Ans. 3–7. The Examiner has also determined that the
cited combination would have been obvious. Final Act. 2–4; Ans. 6, 7.
We agree with the Appellant. Here, even taking the cited prior art to
disclose the argued claim limitations, we determine that the cited
combination of references in the rejection would not have rendered claim 11
obvious. Royle discloses a virtual bookshelf for online storage that allows
the transfer of material to a third party with a clearinghouse in between in
which funds are transferred between the user and third party. Royle,
Abstract, 7:–26. Claus discloses a money transfer technique using smart
cards. Claus, Abstract, col. 2:33–57. Poltorak discloses a transfer of media
content and generating a purchase request message. Poltorak, Abstract, ¶
149. In KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007) the
Supreme Court noted that in an obviousness analysis “rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” Id. at 418.
Here, the argued claim 11 requires in combination with the other claimed
limitations:
responsive to the disabling of the DRM right, receiving
and storing a credit at the first device;
then forming a message for communication, the message
comprising an identifier of the selected new media and the
stored credit; [and]
transmitting the message from the first device to a server;
and
receiving the selected new media, for which a DRM right
associated with the selected new media, as received, is
activated for the first device.
Appeal 2020-003461
Application 12/256,943

5

Appeal Br. 10–11, Claims App. (emphasis added). Here, these claim
limitations and their sequence, in combination with the other claimed
elements would not have been obvious in view of the cited combination of
Royle, Claus, and Poltorak of record without impermissible hindsight.
Although Royle, for example at page 7:7–26, does disclose the transfer of
material rights between users, funds are transferred between the parties, and
not with a credit in the specific manner claimed. Although Claus, at col.
2:33–57 for example, does disclose the transfer of payment, it is done in
relation to smart cards and accounts, not in relation to digital rights or with a
message in the manner claimed. Poltorak, at paragraph 149 for example,
discloses the generation of a purchase request message, but without
including in the message the digital rights or a credit. Here, the cited
combination of references lacks articulated reasoning with rational
underpinnings to support a conclusion of obviousness to meet the limitations
of claim 11 without impermissible hindsight. Accordingly the rejection of
independent claim 11 and its dependent claims is not sustained. Independent
claim 1 is directed to similar subject matter to that of claim 11 addressed
above and the rejection of this claim and its dependent claims is not
sustained for the same reasons given above.

DECISION
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1, 3, 6, 11, 13, and 16 under 35 U.S.C. § 103 as
unpatentable over Royle, Claus, and Poltorak.
Appeal 2020-003461
Application 12/256,943

6

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 6, 11,
13, 16
103 Royle, Claus,
Poltorak
1, 3, 6, 11,
13, 16

REVERSED