Ex Parte Ebihara et al

Board of Patent Appeals and Interferences

May 18, 2012

11216210 (B.P.A.I. May. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MUNETAKE EBIHARA, HIROSHI KUNO, and
KEIKO SAEKI
____________________

Appeal 2011-005329
Application 11/216,210
Technology Center 3600
____________________

Before, MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and BIBHU
R. MOHANTY, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005329
Application 11/216,210

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-10, 12, 26, and 28. We have jurisdiction under 35
U.S.C. § 6(b) (2002). A hearing was held on May 9, 2012.

Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A license source apparatus for transferring a license
separately from content and defining a content usage rule to a license
destination apparatus, the license source apparatus and the license
destination apparatus each being a unit of a license processing
apparatus, the license source apparatus, comprising:
creating means for creating a message, the message including
the license, a manipulation type defining a type of processing of the
license between the license source apparatus and the license
destination apparatus, and an apparatus attribute defining an attribute
of the license source apparatus to identify the license source
apparatus; and transferring means for transferring the message from
the license source apparatus to the license destination apparatus; and a
processor configured to delete the license from the license source
apparatus when the manipulation type is transfer for transferring the
license and the message including the license is transferred from the
license source apparatus to the license destination apparatus, and to
update the license with an updated license received from the license
destination apparatus when the manipulation type is update for
updating the license and the message including the license is
transferred from the license source apparatus to the license destination
apparatus.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Stefik US 5,629,980 May 13, 1997
Appeal 2011-005329
Application 11/216,210

3
OMA-DRM-DRM-V2_0-20040716-C, DRM Specification Candidate
Version 2.0 -16 July 2004, Open Mobile Alliance OMA-DRM-DRM-
V2_0-20040716-C, 142 pages.

The following rejections are before us for review1.
The Examiner rejected claims 1-10, 12, 26 and 28 for failing to
comply with the enablement requirement under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
The Examiner rejected claims 1-10, 12, 26 and 28 are unpatentable
under 35 U.S.C. § 103(a) over DRM in view of Stefik.

ANALYSIS
We do not find that the Examiner has made a prima facie case that
Appellants failed to comply with the enablement requirement under 35
U.S.C. § 112, first paragraph based on the Wands factors2. Accordingly, we
will not sustain the Examiner’s rejection of the claims under 35 U.S.C. 112,
first paragraph.

1 The Examiner withdrew the 35 U.S.C. 112, Second Paragraph Rejection
(Answer 3).
2 “[T]o be enabling, the specification of a patent must teach those skilled in
the art how to make and use the full scope of the claimed invention without
‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed. Cir.
1993). Factors to consider include “(1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the
claims.” In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).

Appeal 2011-005329
Application 11/216,210

4
Concerning the rejection made under 35 U.S.C. § 103(a), we find that
each of the independent claims require “to update the license with an
updated license received from the license destination apparatus when the
manipulation type is update for updating the license and the message
including the license is transferred from the license source apparatus to the
license destination apparatus. (emphasis added).”
Preliminarily, we disagree with the Examiner that the use of the word
configured as applied to a processor in a system claims does not add an
additional structural limitation, causing an otherwise general purpose
computer to become a special purpose computer. Changing the physical
structure of a processor occurs where a computer is configured by code to
perform a specific function. See In re Alappat, 33 F.3d 1526, 1545
(Fed.Cir.1994) (en banc); see also, In re Bernhart, 57 C.C.P.A. 737, 417
F.2d 1395, 1399-1400, (CCPA 1969) (“[I]f a machine is programmed in a
certain new and unobvious way, it is physically different from the machine
without that program; its memory elements are differently arranged.”).
The Examiner found that “DRM clearly discloses that licenses are
brought from a destination to a source (9.6, ‘A given Rights Object can be
inserted into the corresponding DCF for purposes of storage and simplicity
in managing the objects. At some later point in time, they may want to
retrieve said Protected Content and Rights Objects from the remote storage
back onto the Device store’)”. (Answer 24).
However, a review of section 9.6 of DRM reveals that what is
disclosed there is the removal and subsequent return of “Protected Content
and Rights Objects off the Device, e.g. to removable memory, a personal
computer, or a network store to make room for new Protected Content and
Appeal 2011-005329
Application 11/216,210

5
Rights Objects.” While the new Protected Content and Rights Objects are
seen as an updated license, nothing in this passage discloses the update
occurrs with an updated license received from the license destination
apparatus as required by the independent claims. The Examiner does not
offer a reasoning as to why a person with ordinary skill in the art would
understand how the update would occur in this fashion in DRM.
Similarly, Stefik does not overcome this deficiency because in col. 35
lines 57-58, Stifik discloses that “[t]he server updates the usage rights
information in the digital work to reflect the number of copies loaned out.”
As such, it is clear from Stefik that the server/license source apparatus only
increments the number of usages in the work which would not entail
presenting to the server an updated license from the destination device
because it is the server in Stifik which is updating the license in the work.
The Examiner does not offer a reasoning as to why a person with
ordinary skill in the art would understand how the update would occur in the
claimed fashion relative to what is disclosed in Stifik.
Accordingly, we cannot sustain the rejection of independent claims 1,
12 and 26.
Since claims 2-10, 12 and 28 depend from claim 1 and 26, and since
we cannot sustain the rejection of claim 1, the rejection of these claims
likewise cannot be sustained.

REVERSED

MP