Ex Parte Dang et al

Patent Trial and Appeal Board

Mar 16, 2016

11821985 (P.T.A.B. Mar. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111821,985 0612612007
48915 7590 03/18/2016
CANTOR COLBURN LLP-IBM YORKTOWN
20 Church Street
22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
Ya Bin Dang
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.
CN920060015US 1 8272
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/18/2016 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):
usptopatentmail@cantorcolbum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YA BIN DANG, BO FENG,
LING SHAO, and RONG YAN
Appeal2013-008471
Application 11/821,985 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner's
final decision to reject claims 1, 2, 4, 5, 10, 11, 13, and 18. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, the real party in interest is International Business
Machines Corporation. Appeal Brief filed December 14, 2012, hereafter "App.
Br.," 2.
Appeal2013-008471
Application 11/821,985
BACKGROlH-.JD
The invention relates to digital rights management ("DRM"). Specification,
hereafter "Spec.," 1, 11. 7-8. The invention is directed to the support of many-to-
many relationships among DRM entities in a system, where the DRM entities can
include DRM agent devices, user accounts, rights issuers, and other similar
entities. Id. at 11, 11. 26-28.
Representative claims 1 and 18 are reproduced from pages 29-30 and 33-34
of the Appendix of the Claims of the Appeal Brief (Claims App 'x) as follows, with
emphasis added to relevant claim limitations:
1. A method for a server having at least one processing device
to perform digital rights management (DRM), comprising the steps of:
receiving a registration request from one of a plurality of DRM
agent devices associated with one user account, said registration
request requesting to register said one DRM agent device to one of a
plurality of rights issuers;
in response to said registration request said at least one
processing device performing steps of:
comparing a number of DRM agent devices registered with said
one user account to a pre-determined value;
terminating said registration process when the number of DRM
agent devices registered with said one user account is at least equal to
a pre-determined value;
completing a registration process in said one rights issuer,
including establishment of a relationship among said one user
account, said one DRM agent device and said one rights issuer when
said number of DRM agent devices registered with said one user
account is less than a predetermined value; and
returning a registration completion response to said one DRM
agent device.
18. A non-transitory computer program product for storing
computer program codes in a computer readable form thereon so as to
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Application 11/821,985
enable the computer system having at least one processing device to
execute the computer program codes to implement a method for
digital rights management (DRM), said method comprising the steps
of
receiving a registration request from one of a plurality of DRM
agent devices associated with one user account, said registration
request requesting to register said one DRM agent device to one of a
plurality of rights issuers;
in response to said registration request, comparing a number of
DRM agent devices registered with said one user account to a pre-
determined value;
terminating said registration process when the number of DRM
agent devices registered with said one user account is at least equal to
a pre-determined value;
completing a registration process in said one rights issuer,
including establishment of a relationship among said one user
account, said one DRM agent device and said one rights issuer when
said number of DRM agent devices registered with said one user
account is less than a predetermined value; and
returning a registration completion response to said one DRM
agent device.
In a Final Rejection, the Examiner rejects claims 1, 2, 4, 5, 10, 11, 13, and
18 under 35 U.S.C. § 103(a) as obvious over Irwin,2 Matsuzaki,3 and Le.4 Claim
18 is rejected under 35 U.S.C. § 102(b) as anticipated by Irwin. Final Action,
hereafter "Final Act.," 4--9, mailed May 31, 2012; see, also, Answer, hereafter
"Ans." 5-9, mailed April 23, 2013.
2 US Publication 2005/0071280 A 1, published March 31, 2005.
3 US Publication 2004/0093523 Al, published May 13, 2004.
4 US Publication 2007/0061886 Al, published March 15, 2007.
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Application 11/821,985
DISCUSSION
Claims 1, 10, and 18 are independent claims. The Appellants argue the
obviousness rejections of claims 1, 10, and 18 on common issues, with their
respective dependent claims, claims 2, 4, 5, 11, and 13, standing or falling with
them. App. Br. 17-27. In light of our disposition of this appeal and the
commonality of issues, we need address only limited obviousness arguments
presented. The Appellants also argue the anticipation rejection of claim 18, and we
address that separately. Id. at 9-16.
Anticipation Re} ection
The Examiner rejected claim 18 as anticipated by Irwin, finding that Irwin
discloses a computer program product that implement methods for digital rights
management. Final Act. 5 (citing Irwin i-f 54 ). The Examiner determined that
descriptive or non-functional data, such as that referenced in "receiving a
registration request from one of a plurality of DRM agent devices ... , in response
to said registration request, comparing a number of DRM agent devices registered
with said one user account to a pre-determined value; terminating said registration
process ... , and returning a registration completion response to said one DRM
agent device" do not distinguish the claimed invention from the prior art. Id. at 5-
6.
The Appellants argue that the Examiner erred in concluding that Irwin
anticipates claim 18 because it does not disclose all of the claim features, as the
Examiner recognized in the obviousness rejections. App. Br. 12-13. The
Appellants further contend that elements identified by the Examiner as non-
functional are computer processing method steps and these type of claims elements
are recognized and accepted as functional and represent "concrete data handling
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Application 11/821,985
step[s]." Id. at 9-13 (citing In re Beauregard, 53 F. 3d 1583 (Fed. Cir. 1995);
CyberSource Corp. v. Retail Decisions Inc., 654 F.3d 1366 (Fed. Cir. 2011)).
We do not find that claim 18's limitations constitute non-functional
descriptive material. Here, under the claim, the computer program product has to
be capable of the functions of performing the steps of the method as listed in the
claim. Therefore, we do not agree with the Examiner that the steps recited are
descriptive or non-functional and should be disregarded. Additionally, Irwin does
not disclose all the limitations of the claim, for instance, that of "completing a
registration process ... when said number of DRM agent devices registered with
said one user account is less than a predetermined value," as discussed further
below.
We therefore cannot sustain the rejection of claim 18 under 35 U.S.C.
§ 102(b).
Obviousness Rejections
The Examiner finds that Irwin, Matsuzaki, and Le disclose all the elements
of the claims. Final Act. 6-9. The Examiner finds that Irwin does not teach the
elements of "comparing a number of DRM agent devices registered with said one
user account to a pre-determined value" and "terminating said registration process
when the number of DRM agent devices registered with said one user account is at
least equal to a pre-determined value," however, Matsuzaki teaches those elements.
Id. at 7 (citing Matsuzaki i-fi-f 18, 71, 73, 93-94, 289). For the element of
"establishment of a relationship among said one user account, said one DRM agent
device and said one rights issuer when said number of DRM agent devices
registered with said one user account is less than a predetermined value," in the
Final Action the Examiner finds that Irwin and Matsuzaki do not teach this
element, but Le discloses it. Id. at 8 (citing Le i-fi-f 17, 67). More specifically, the
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Application 11/821,985
Examiner finds that Le "discloses registering agents based upon accepting of
authorization keys," and "submits that use of the proper keys is a 'predetermined
threshold.'" Id. at 3--4 (citing Le i-f 67). In the Answer, the Examiner additionally
determines that because "the claim does not positively recite any language stating
that a registration counter is compared with a 'pre-determined value' and therefore
it is impossible to determine 'when the number of registered devices will be less
than a 'pre-determined value,"' that it is therefore an optional claim element that
does not narrow claims, and therefore can be omitted. Ans. 14.
The Appellants argue that Irwin fails to teach or suggest that one user
account can be associated with more than one DRM agent device; does not teach
or suggest that upon receipt of a registration request, a number of DRM agent
devices for a given user account is compared to a pre-determined value; and does
not teach or suggest the completing or terminating of a registration process based
on the comparison. App. Br. 15-16. The Appellants also allege that one of
ordinary skill in the art would not be motivated to modify Irwin with Matsuzaki
because it would render it unworkable for the purpose of dissemination of
proprietary content, and with that modification "[ o ]ne would arrive at an
embodiment of Irwin in which the central rights provider limited the number of
intermediate rights providers that were able to obtain and disseminate proprietary
content." Id. at 22-23.
The Appellants also dispute the Examiner's finding that the claimed
limitation of
completing a registration process in said one rights issuer, including
establishment of a relationship among said one user account, said one
DRM agent device and said one rights issuer when said number of
DRM agent devices registered with said one user account is less than a
pre-determined value; and returning a registration completion response
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Application 11/821,985
is taught by Le because the disclosure of the acceptance of authorization keys is
not equivalent to a teaching of a comparison of a number of devices. Id. at 24--26
(citing Le i-f 67). The Appellants also contend that the claimed limitation cannot be
omitted because the registration completion requires the consideration of this
limitation. Reply Brief, hereafter "Reply Br.," 11-12, mailed June 24, 2013
In rejecting claims under 35 U.S.C. § 103(a), the Examiner bears the initial
burden of establishing a prima facie case of obviousness, where a factual basis
must be established to support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1074 (Fed. Cir. 1988); In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992). The preponderance of the evidence here favors the Appellants. We
determine that the Examiner has not established that the applied prior art teaches or
suggests all the limitations of the claims. It is not apparent that Le's use of keys
can reasonably be considered to be the equivalent to the number of DRM agent
devices as claimed-"keys" and the "number of agent devices" are not
interchangeable because they are different types of information used for different
purposes. Additionally, we do not agree that the claim limitation that includes
"completing a registration process ... when said number of DRM agent devices
registered with said one user account is less than a predetermined value" can be
disregarded as an optional limitation because there is no recitation that a
registration counter is compared with a pre-determined value. The claim refers to
a step that requires comparing a "number of registered DRM agent devices" with a
predetermined "number" or value of the same. These are method claims and there
is no requirement that there be a positive recitation of a "registration counter."
There is also no suggestion that this element is optional within a reading of the
claim as a whole. Thus, we cannot sustain the Examiner's rejection of claims 1, 2,
4, 5, 10, 11, 13, and 18 under 35 U.S.C. § 103(a).
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Application 11/821,985
SUMMARY
The rejection of claim 18 under 35 U.S.C. § 102(b) is reversed.
The rejections of claims 1, 2, 4, 5, 10, 11, 13, and 18 under 35 U.S.C.
§ 103(a) are reversed.
REVERSED
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