Ex Parte Farrugia et al

Patent Trial and Appeal Board

Jun 18, 2018

11382469 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/382,469 05/09/2006
142248 7590 06/20/2018
McDermott Will & Emery LLP (Apple)
4 Park Plaza
Suite 1700
Irvine, CA 92614
FIRST NAMED INVENTOR
Augustin J. Farrugia
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.
100947-0928 (P4025US1) 6136
EXAMINER
KIM, STEVENS
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
06/20/2018 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):
IPDocketMWE@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AUGUSTIN J. FARRUGIA and
GIANP AOLO F ASOLI
Appeal2017-002549
Application 11/3 82,469
Technology Center 3600
Before JOSEPH L. DIXON, LINZY T. McCARTNEY, and
SCOTT E. BAIN, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-002549
Application 11/3 82,469
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 91, 92, and 101-131. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The claims are directed to digital rights management (DRM) systems
that require a user to pay a periodic subscription fee and "in order to protect
the content providers['] rights. The DRM process has to be able to
determine the validity of [the] subscription when a user wants to use the
content" and "there is, therefore a need in the art to determine whether a
user's subscription is still valid without solely relying on the user device
clock, especially in environments where the user is not always connected to
a DRM enforcing device." (Spec. 2).
Independent claim 91, reproduced below, is illustrative of the claimed
subject matter:
91. A digital rights management (DRJv1) method for determining
whether a device has been manipu1ated1 the rnethod comprising:
at a first instance in time, receiving a first request to access a
piece of content protected by a time-limited subscription on the device;
comparing a first set of attributes of a plurality of entities of the
device from the first instance in time with a stored second set of
attributes of the plurality of entities of the device from a second
instance in time in order to identify differences between the second and
first sets of attributes1 the second instance in time earlier than the first
instance in time;
1 Appellants indicated that Apple Inc. is the real party in interest. (App. Br.
2)
3
Appeal2017-002549
Application 11/3 82,469
determining whether the identified differences behveen the
second and first sets of attributes are expected in accordance with a
difference between a device clock value at the second instance in time
and a device clock value at the first instance in time;
only granting access to the piece of content in response to the
first request when the identified differences between the second and
first sets of attributes are expected;
at a third instance in time later than the first instance in time1
receiving a second request to access the piece of content;
cornparing a third set of attributes of the plurality of entities of
the device from the third instance in time with the first set of attributes
from the first instance in time in order to identify differences beh,veen
the first and third sets of attributes;
determining whether the identified differences between the first ,._,
and third sets of attributes are expected in accordance ,vith a difference
between the device clock value at the first instance in time and a device
c1ock value at the third instance in tirne: and
only granting access to the piece of content in response to the
second request when the identified differences between the first and
third sets of attributes are expected1
wherein each of the receiving, comparmg, determining, and
granting are performed by the device.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Ginter
(hereinafter "Ginter")
Zhuk
(hereinafter "Zhuk")
us 5,892,900 Apr. 6, 1999
US 7,594,271 B2 Sept. 22, 2009
4
Appeal2017-002549
Application 11/3 82,469
REJECTIONS
The Examiner made the following rejections:
Claims 91, 92 and 101-131 stand rejected under 35 U.S.C. § 101, as
being directed to non-statutory subject matter. (Final Act. 10).
Claims 91, 92 and 101-109 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
(Final Act. 14).
Claims 91, 92 and 101-131 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the applicant regards as the
invention. (Final Act. 17).
Claims 91, 92 and 101-131 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ginter in view of Zhuk. (Final Act. 19-25).
ANALYSIS
35 US.C. § 101 Rejection
With respect to claims 91, 92, and 101-131, Appellants rely on the
same arguments for patentability for each of the independent claims and do
not set forth separate arguments for patentability. (App. Br. 13-21 ).
Therefore, we select independent claim 91 as the representative claim for the
group and will address Appellants' arguments thereto. In addition, when
Appellants do not separately argue the patentability of the dependent claims,
the claims stand the fall with the claim from which they depend. In re King,
801 F.2d 1324, 1325 (Fed. Cir. 1986), see also 37 C.F.R. § 4I.37(c)(l) (iv).
5
Appeal2017-002549
Application 11/3 82,469
Appellants contend claim 91 is not directed to the abstract idea of
granting access to content based on analysis of illicit activities, but rather, is
directed to a novel and unobvious method of determining whether a device
has been manipulated. Appellants argue the claims do not describe an
abstract concept similar to those found by the courts to be abstract ideas
because the Examiner has not clearly identified what type of abstract
concept the claim describes. (App. Br. 13). Appellants further contend the
claimed solution is inextricably tied to computer technology to overcome a
problem specifically arising in the realm of device manipulation and that the
device is not incidental to the claim, but is instead key to both the problem
and solution. (App. Br. 13-14). Appellants argue the claimed invention
provides a solution to a problem that specifically arises in electronic devices,
"namely how to grant access to content on a device while ensuring that the
device has not been manipulated." (App. Br. 14) (emphasis added).
Appellants also argue the claim elements either taken individually, and/or in
combination, amount to significantly more that the abstract idea of
fundamental practices of granting access to content based on analysis of
illicit activities because it is improving the technology of DRM. (App. Br.
15).
Appellants present the same line of argument in the Reply Brief
regarding claim 91 being more specific than an abstract idea and that the
claims improve computer technology. (Reply Br. 2-3). Appellants contend
that "the Federal Circuit in Enfzsh stated that certain claims directed to
improvements in computer-related technology, including claims directed to
software, are not necessarily abstract (Enfzsh v. Microsoft Corp, 2015-1244
(Fed Cir, May 12, 2016)" and that as in Enfzsh, the claimed invention
6
Appeal2017-002549
Application 11/3 82,469
specifically assert[] improvement in computer capabilities.
Specifically, the current invention achieves other benefits over
conventional methods of granting access to content. That is the
claims specifically describe key elements to achieve the desired
improvements in computer-related technology and are not
directed to generalized steps to be performed on a computer
simply using conventional computer activity.
(Reply Br. 3).
We are unpersuaded by Appellants' arguments that the claim 91
complies with 35 U.S.C. § 101, as patent eligible subject matter. (App. Br.
13-21; Reply Br. 2--4)
The Examiner found that claim 91, when considered as a whole, did
not amount to significantly more than an abstract idea and is directed to the
idea of fundamental practices of granting access to content based on analysis
of illicit activity. (Final Act. 10-11). Further, the Examiner found the
additional elements of claim 91 amount to no more than reciting instructions
to implement the idea on a computer and recite generic computer structures
that are well-understood, routine, and conventional and the additional
elements do not transform the idea into a patent eligible application. (Final
Act. 11).
Moreover, in the Examiner's Answer, the Examiner maintained that
"determining whether a device has been manipulated based on expected
differences between attributed and entities within the device according to a
system clock of the device" is an abstract idea similar to comparing new and
stored information and using rules to identify options similar to claimed
concepts of computing an alarm limit[] or calculating the difference between
local and average data values previously identified by the courts, thus the
7
Appeal2017-002549
Application 11/3 82,469
Examiner maintained the concept in the claim is not meaningfully different
than those concepts found by the courts to be abstract ideas. (Ans. 3--4).
The Examiner also maintained the claims are not directed to an
improvement tied to computer technology to overcome a problem in the art
because "the focus of the claim is not on an improvement in [the] computer
as tools but on certain independently abstract ideas that use computers as
tools (see Electric Power Group, v Alston S.A. (Fed Cir, 2015-1778,
8/1/2016)" (Ans. 4). We agree with the Examiner.
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has consistently held that
this provision contains an important implicit exception: laws of nature,
natural phenomena, and abstract ideas are not patentable. See Alice Corp. v.
CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409
U.S. 63, 67 (1972) ("Phenomena of nature, though just discovered, mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work."). Notwithstanding that
a law of nature or an abstract idea, by itself, is not patentable, an application
of these concepts may be deserving of patent protection. See Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-72 (2012).
In Mayo, the Court stated that "to transform an unpatentable law of nature
into a patent-eligible application of such a law, one must do more than
simply state the law of nature while adding the words 'apply it."' Mayo, 566
at 72 ( citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in
Mayo "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
8
Appeal2017-002549
Application 11/3 82,469
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims "individually and 'as an ordered combination"' to
determine whether there are additional elements that "'transform the nature
of the claim' into a patent-eligible application." Id. (quoting Mayo, 566 U.S.
at 78, 79).
In other words, the second step is to "search for an 'inventive
concept' - i.e., an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
on the [ineligible concept] itself."' Id. (brackets in original) ( quoting Mayo,
566 U.S. at 72-73). "A claim that recites an abstract idea must include
'additional features' to ensure the claim is more than a drafting effort
designed to monopolize the [abstract idea]."' Id. at 2357 (brackets in
original)(quoting Mayo, 566 U.S. at 77-78).
The prohibition against patenting an abstract idea "cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment or adding insignificant post solution activity."
Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation and internal
quotation marks omitted). The Court in Alice noted that "[ s ]imply
appending conventional steps, specified at a high level of generality," was
not "enough" [in Mayo] to supply an "'inventive concept."' Alice, 134
S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Under the Mayo framework, and considering each of the steps in
claim 91, we agree with the Examiner's conclusion that claim 91 is directed
to an abstract idea - the idea of comparing new and stored information using
9
Appeal2017-002549
Application 11/3 82,469
rules and/or mathematical correlation in granting access. (Final Act. 4).
Each of the steps of claim 91 appear similar or analogous to claims found in
other cases that our reviewing court has found to be directed to abstract ideas
such that each of the determining and comparing steps broadly recite
determining a difference in values is expected and comparing values to
determine differences and granting access to data when the expected values
match. See Smariflash LLC v. Apple Inc., No. 2016-1059, 2017 WL
786431, at 4 (Fed. Cir. Mar. 1, 2017) ("directed to the abstract idea of
conditioning and controlling access to data based on payment") In re Grams,
888 F.2d 835 (Fed. Cir. 1989)("an attempt to patent a mathematical
algorithm rather than a process for producing a product") and Fair Warning
IP, LLC v. Iatric Systems, 839 F.3d 1089 (Fed. Cir. 2016) ("directed to a
patent-ineligible idea: "the concept of analyzing records of human activity to
detect suspicious behavior").
We are also not persuaded by Appellants' argument that the claims
recite an improvement in computer technology of "how to grant access to
content on a device while ensuring that the device has not been
manipulated", and that "the claimed solution is inextricably tied to computer
technology to overcome a problem specifically arising in the realm of device
manipulation." (App. Br. 13-14)(emphasis added).
Appellants have not identified any disclosure in the specification, or
other persuasive evidence, of a technical advance in the claimed device.
While claim 91 refers to performance of the steps by a device, no step ( or
collection of steps) in the claimed method encompass the improvement of
ensuring a device has not been manipulated. Furthermore, Appellants have
not identified any disclosure or technical reasoning as to how the
10
Appeal2017-002549
Application 11/3 82,469
"determined dif±erence between attributes of entities within the device"
improves computer technology as in claim 91.
Rather, we find claim 91 is directed to a result or effect that itself is
the abstract idea which merely invokes generic process or rnachinery and
does not '"focus on a specific means or method that improves the re1evant
technologyt McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F,3d at
1314 (Fed. Cir. 2016). l'vioreover, generically recited computers do not
transform the "idea"' into eligible subject matter {See, cg Alice, 134 S. ct at
23 60 ( exp faining that the claim limitations that "amount to nothing
significantly more than an instruction to apply the abstract idea ... using
some unspecified, generic computer"" is not enough'' to transfonn an
abstract idea into a patent-eligible invention~' (quoting l\,fayo, 566 U.S. at 77,
79)); Intellectual Ventures, 850 F.3d at 1342 ("The claim language here
provides only a result oriented solution, with insufficient detail for how a
computer accomplished it"}
Accordingly, for the reasons discussed above, we sustain the
Examiner's patent eligibility rejection of claim 91 under § 101. The
Examiner and Appellants to argue claim 91 as representative of the group of
claims 91, 92, and 101-131. A.ppe11ants do not set forth separate or
additional arguments for patentability of claims 92, and 101-131 Therefore,
we group claims 92, and 101-131 as faning with representative independent
claim 91 fi.1r the same reasons above, and we sustain the rejection of
independent clairns 110 and 121 and dependent claims 92, l O 1-109, 111-
120 and 122-13L
11
Appeal2017-002549
Application 11/3 82,469
35 U.S.C. § 112,flrst paragraph Rejection
To satisfy the written description requirement, "the applicant must
convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the claimed invention," Moba, B.
V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319 (Fed. Cir. 2003), and
"it is the specification itself that must demonstrate possession." Ari ad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010).
Whether a specification complies with the written description requirement of
35 U.S.C. § 112, first paragraph, is a question of fact. Regents of Univ. of
Cal. v. Eli Lilly and Co., 119 F.3d 1559, 1566 (Fed. Cir. 1997) citing Vas-
Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir. 1991)). The
Examiner has the initial burden of presenting evidence or reasoning to
explain why persons skilled in the art would not recognize in the original
disclosure a description of the invention defined by the claims. In re
Wertheim, 541 F.2d 257,263 (CCPA 1976).
The Examiner finds that the original Specification does not provide
support for the limitations of the claim 91 of "comparing at a first instance
of time a first set of attribute with a stored second set of attributes
associated with a second instance in time and granting access to a piece of
content based on the comparison" and, "a third instance of time, a third set
of attributes with the first set of attributes associated with the first instance
of time and granting access to the piece of content based on the second
comparison" (Final Act. 14--15). In the Examiner's Answer, the Examiner
finds the Appellants' cited portions of the Specification broadly refer to a
life cycle analysis and that the Specification does not disclose a "first request
and second request [ where the] second [] involves analysis specific to the
12
Appeal2017-002549
Application 11/3 82,469
comparing attributes from the time when the second request was received
and attributes from the time when the first request was received." (Ans. 8).
Appellants argue the original Specification describes using "a natural
evolution test" as being performed to take snapshots of system attributes
periodically based on events. The test compares the current snapshot
attributes with the previous snapshot attributes to determine whether changes
are acceptable. (App. Br. 22; Spec. 11-13, 19).
We find Appellants' cited portions of the Specification provide
evidence that describe the claim invention in sufficient detail that one skilled
in the art would reasonably conclude that the inventors had possession of the
claimed invention. Specifically, the original Specification refers to
comparing the current snapshot of a population attributes with a previous
snapshot, as illustrated in Figure 5. (Spec. 12, 19). We further find within
Figure 5, the text on the bottom of either snapshot reflects the snapshot of
files and directories having date and time values, as indicated by the user
device clock. Furthermore the date accessed values are shown as changed at
5 :48 pm. The total number of objects in the folder has increased from 99 to
120, the total size of the file has changed as well as other dates in the
snapshot, when visually compared.
As the original Specification states, "Some embodiments perform
several tests during the evolution test. Some embodiments perform
individual as well as global tests." To which the Specification further
elaborates on:
An example of a global test was described above in reference
with snapshots 535 and 540 in Figure 5. Several global tests can
be performed on different groups of entities in a population. If
any (or a certain number) of these tests fail, the evolution test as
a whole would fail. Some embodiments perform a global
13
Appeal2017-002549
Application 11/3 82,469
evolution test for a set of entities by comparing a weighted
computation ( e.g., a weighted sum) of the changes in a set of
attributes of the set of entities with a threshold to determine
whether the set of entities passes the global evolution test.
(Spec. 22).
On this record, Appellants' argument is persuasive that claim 91 is
fully supported by the Specification. Specifically, in the supporting sections,
the claim limitation of "comparing at a later time, a third instance of time, a
third set of attributes with the first set of attributes associated with the first
instance of time and granting access to the piece of content based on the
second comparison" are shown in the elements of Figure 5 cited by
Appellants in the Appeal Brief. (App. Br. 21-23). Appellants' cited
evidence demonstrates Appellants were in possession of the claimed
invention at the time of filing. Thus, we do not sustain the Examiner's 35
U.S.C. § 112, first paragraph, rejection for lack of written description of
claim 91.
As to claims 101 and 102, the Examiner finds the original
Specification does not provide written description support for the claimed
limitations of "wherein the device only performs the comparison and
determination after attempting to validate the time-limited subscription by
connecting to a DRM server through a network" and "when the identified
differences are not expected, requiring the device to connect to a DRM
server and validate that the time limited subscriptions has not expired before
granting access to the piece of content." (Final Act. 15-16).
Appellants argue the original Specification states "[a]s long as the
user is online, the DRM server can check the validity of the subscription by
comparing ... with the time and/or data obtained from a trusted source" and
14
Appeal2017-002549
Application 11/3 82,469
"[i]f the evolution test determines (at step 320) ... to go online and synch up
the subscription with the DRM server set" then the device would only use
the alternate life cycle test when the device is offline and the evolution test
result would yield a determination that the device was perhaps manipulated.
(App. Br. 45--46; Spec. 12, Figure 3).
We agree with Appellants that Appellants' cited evidence, in the
Specification and drawings, demonstrates Appellants were in possession of
the claimed invention. Thus, we do not sustain the Examiners 35 U.S.C.
§ 112, first paragraph, rejection for lack of written description of dependent
claims 101 and 102. 2
As to claims 92 and 103-109 the Examiner finds the claims are
rejected similarly as claim 91, that the claims lack support in the written
description (Final Act. 16). By virtue of dependency from selected claim
91 3, we do not sustain for the same reasons presented herein the written
description rejection of claims 92 and 103-109.
35U.SC§112. second paragraph Rejection
The test for definiteness under 35 U.S.C. § 112, second paragraph is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Language in a
2 The Examiner also finds claims 112, 113, 123, and 124, also lack support
in the written description. However, these claims 112, 113, 123, and 124 do
not appear in the heading of the rejection, nor are the specifics of the
additional limitations addressed within the final rejection. (Final Act. 15-
16). We do not sustain this rejection for the same reason as claims 101 and
102.
3 37 C.F.R. § 4I.37(c)(l)(iv).
15
Appeal2017-002549
Application 11/3 82,469
claim is unclear if, when given its broadest reasonable interpretation, it is
ambiguous, vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention ... , " In re Packard, 7 51 F. 3 d 13 07, 1311
(Fed. Cir. 2014), or if it is "is amenable to two or more plausible claim
constructions ... ," Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008)
(precedential).
The Examiner maintains claims 91, 92, and 101-131 are indefinite for
failing to particularly point out and distinctly claim the subject matter which
the inventor or a joint inventor, or for pre-AIA the applicant regards as the
invention, for the following limitations:
Per claim 91, the term "the identified differences between the
second and first set of attributes" lack antecedent basis as there is no
positively recited step of "identifying differences between the second
and first set of attributes. Similar rationale applies to "the identified
differences between the first and third set of attributes."
Similarly, per claims 110 and 121, the claims recite "whether
the identified differences between the first and second sets of
attributes are expected" and "when the identified differences between
the first and second sets of attributes are expected". The terms "the
identified differences between the second and first set of attributes"
lack antecedent basis as there is no positively recited step of
"identifying difference between the second and first set of attributes.
As per claims 92, 111, and 122, the scope of the claim is
unclear. Specifically, the claims are directed to further limiting
"expected differences." The parent claim(s), however, is silent on
expected differences.
As per claims 102, 106, 113, 117, 124, and 128, the term "the
identified differences" lack antecedent basis. Furthermore, it is
unclear which one of the differences refers to identified differences.
As per claims 107, 108, 118, 119, 129, and 130, it is unclear
what the claim is attempting to further limit as there is no recitation of
"manipulation" in the parent claims.
16
Appeal2017-002549
Application 11/3 82,469
(Final, 16-18).
Additionally, the Examiner finds "the claim merely suggests intended
result/use of the comparison" and "the claim does not illuminate whether the
identification of difference is performed by the device." (Ans. 11 ).
Appellant argues that the limitation of "identified differences between
the second and first sets of attributes" is clearly supported in line 3 of the
second limitation of the claim. (App. Br. 24--25). Further, Appellants argue,
the term "the identified differences between the first and third sets of
attributes is also clearly supported in lines 2-3 of the sixth limitation." (App.
Br. 25). We agree with Appellants, as the recited "identified differences" in
line 3 of the second limitation of claim 91, refers to a positively recited step
and "gives antecedent support to the phrase." (App. Br. 24, 26). Thus, we
agree with Appellants and do not sustain the Examiner's 35 U.S.C. § 112,
second paragraph rejection over claim 91.
As to claims 92, 111, and 122, the Examiner finds the scope of the
claims is "unclear" because the term "expected difference" in the dependent
claims is not introduced in the parent claims and lacks antecedent basis.
(Ans. 12).
Appellants contend the independent claim, to which the claims
depend, indicate the notion of expected differences and the claims were
amended to include "wherein expected differences are based on .... " Thus,
Appellants contend no specific antecedent basis is required. (App. Br. 47).
We disagree with the Appellants, and are not persuaded by Appellants'
response.
We agree with the Examiner that it is not clear from the claim
language, as to which "expected difference" from independent claim 91 that
the limitation depends. The claims do not elucidate which, difference ( e.g.
17
Appeal2017-002549
Application 11/3 82,469
either between the second and first set or the difference between the third
and first "identified differences"), is expected. Thus, the rejection of these
claims is sustained.
As to dependent claims 102, 106, 113, 117, 124 and 128, Appellants
contend that they have already provided support for the "identified
differences" in the claims, and provide no further argument. (App. Br. 47).
The Examiner maintains the same basis for the dependent claims, as
provided in the independent claims. (Final Act. 12). Therefore, we do not
sustain the rejection as to claims 102, 106, 113, 117, 124 and 128 for the
same reasons presented above for base claim 91.
As to claims 107, 108, 118, 119, 129, and 130, Appellants contend the
term "manipulated" is defined in the parent claim to which the claim
depends and further that "manipulation" is the noun form of the verb
"manipulate." (App. Br. 47--48).
The Examiner finds the limitation "wherein manipulation of the
device comprises setting a device clock back" lacks specific grammatical
article and that it is unclear that "manipulation" refers back to "manipulated"
in at least claim 91. (Ans. 13). We agree with Appellants' argument that the
term "manipulation" is supported by the term manipulated in the parent
claim. Further, we find the term "manipulation" does not appear ambiguous,
vague, incoherent, opaque, or otherwise unclear in describing and defining
the claimed function In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014).
Finally, we find the Examiner has not explained why the claim language,
when read in light of the Specification, would be unclear to one of ordinary
skill in the art. Thus, we do not sustain the rejection of claims 107, 108,
118, 119, 129, and 130.
18
Appeal2017-002549
Application 11/3 82,469
35 us.c. § 103
With respect to claims 91, 92, and 101-131, Appellants rely on the
same arguments for patentability for each of the independent claims and do
not set forth separate arguments for patentability. (App. Br. 31--45.)
Therefore, we select independent claim 91 as the representative claim and
address Appellants' arguments thereto. 37 C.F.R. § 4I.37(c)(l)(iv).
With respect to representative independent claim 91, Appellants
contend:
First, Ginter and Zhuk do not disclose or suggest a method that
compares a first set of attributes of several entities of a device
from a first instance in time with a stored second set of attributes
of several entities of the device from a second instance in time in
order to identify differences between the second and first sets of
attributes, determines whether the identified differences are
expected in accordance with a difference between a device clock
value at the second instance in time and a device clock value at
the first instance in time, and only grants access to the piece of
content when the identified differences are expected. Second,
the cited references do not disclose or suggest a method that
compares a first set of attributes from the first instance in time
with a stored second set of attributes from a second instance in
time and compares a third set of attributes from a third instance
in time, later than the first instance in time, with the first set of
attributes from the first instance in time. Third, the Office Action
fails to provide a sufficient reason why it would have been
obvious to one of ordinary skill in the art to combine the elements
of Ginter and Zhuk to arrive at the claimed invention.
(App. Br. 31-32).
19
Appeal2017-002549
Application 11/3 82,469
The Examiner finds that Ginter discloses "comparing a first set of
attributes of a plurality of entities of the device at a first instance in time
with a second set of a plurality of attributes of the set of entities of the
device at a second instance in time wherein the attributes are values
associated with the plurality of entities of the device, wherein comparing
comprises comparing the values" by calculating difference values of:
fingerprint ( e.g. digital signatures), discrepancies of clocks, expected
tampering control signals after appropriate number of clocks and obtaining
trend information that suggest differences in two instances of time.
(Ans. 14).
The Examiner concludes that these calculations of differences of
Ginter are used,
in order to identify difference between the second and the first sets of
attributes, the second instance in time earlier than the first instance in
time (the expression 'in order to identify ... ' represents intended
use/result while the description of second instance in time represents
nonfunctional descriptive material) wherein the attributes comprise at
least one of size, creation date, last modification date, last access date,
absence, and presence of files and directories of the device.
(Ans. 14--15) (citations omitted).
Appellants contend that "[ o ]f the sections cited in the Office Action,
on pages 9-10, only a small subset even relate to comparisons of any kind,
and none deal with comparing a first set of attributes with an earlier second
set of attributes for identifying differences between the two sets." (App. Br.
33, Reply Br. 5).
We are persuaded by Appellants' argument that Ginter does not teach
or suggest the limitation in claim 91 of "comparing a first set of attributes at
a first instance in time and a second set of attributes, at an earlier second
20
Appeal2017-002549
Application 11/3 82,469
instance in time, in order to identify differences between the second and first
attributes." (Id.)
We additionally agree with Appellants' argument that Zhuk does not
provide a discussion in the cited portions "regarding determining differences
between the second and the first set of attributes." and "Zhuk does not
actually describe a device clock nor determining differences between device
clock values." (App. Br. 34). Moreover, we agree that the Examiner does
not set forth a persuasive motivation to combine the references and that the
Examiner concludes that the combination would provide "a predictable
result to one of ordinary skill would be to apply known technique, as taught
by Zhuk to apply known secure methodology of tampering detection." We
also agree the Examiner has not provided an "articulated reasoning with
some rationale underpinning" to explain why the specific elements of the
specific references in this case would be obvious to combine, as required by
KSR. (App. Br. 36).
Further, the Examiner asserts for the sake of arguendo that another
U.S. Patent Publication 2003/0145083 (hereinafter Cush), discloses
"comparing attributes ... to identify differences," as recited in claim 91.
(Final Act. 24). The Examiner finds that in combination of Ginter and Zhuk
with the teachings of Cush "would have been obvious to one of ordinary
skill in the art of data security to substitute one known element for another
for technique identification of trend/change in a computer." (Final Act. 24).
The Examiner however must positively recite the reference in the heading of
the rejection if relied upon to support the rejection. In re Hoch, 428 F.2d
1341, n.3 (CCPA 1970). Because the Examiner has not done so here, we do
not sustain the rejection of claims 91, 92, 102-111, 113-122 and 124--131.
21
Appeal2017-002549
Application 11/3 82,469
As to claims 101, 112 and 123, the Examiner finds "Ginter discloses
attempting to validate the time-limited subscription by connecting to a DRM
server." However, the Examiner finds Ginter does not disclose the timing
aspect of such attempt, as recited in claim 91 and Ginter only performs
tampering determinations. (Ans. 24). The Examiner further finds the
"timing difference of performing the tampering determination is an obvious
design choice. It would have been obvious to try any one of finite timing
options, each of which had a reasonable expectation of success." (Ans. 24).
Appellants contend the cited portions of Ginter used in rejecting
claims 101, 112 and 123, are not related to tampering determinations. (App.
Br. 49). Moreover, Appellant contends Ginter doesn't even disclose a
"relation between attempting to validate a time-limited subscription by
connecting to a DRM server and performing comparisons .... "(App.Br.
49), thus the cited portions of Ginter used in the rejection "is not one of a
design choice re-timing."
We agree with Appellants' argument that the cited portions do not
mention the claimed limitation of re-timing, no such feature was listed in the
cited portions. Moreover, the rejection does not include the requisite
findings to support the Examiner assertion that it would have been obvious
to try "any one of finite timing option ... " under KSR. Thus, we do not
sustain the rejection of claims 101, 112 and 123.
As discussed herein) A.ppellants' arguments show error in the
Examiner~s findings of fact and conclusion of obviousness that the
combination of Ginter and Zhuk teaches or suggests the disputed limitations
of claim 91, Specifica11y, Appellants are persuasive in arguing that only
22
Appeal2017-002549
Application 11/3 82,469
small portions of cited sections of Ginter deal with comparisons of any kind
and none deal with the claimed limitations. (App. Br. 33, Reply Br. 5).
Additionally, and for the same reasons, Appellants have also shovvn
error in the Examiner's factua1 findings or conclusion obviousness that the
combination of Ginter and Zhuk teaches or sugg:ests the disputed limitations • <>
of independent claims 110 and 121. Further) Appellants' arguments have
shown the Examiner's factual findings of the cited po1iion of Ginter for
claims l OL 112 and 123 also do not provide suppmt for the conclusion of
obviousness~ and we do not sustain the rejections thereof
DECISION
For the above reasons, we sustain the Examiner's decision rejecting of
claims 91, 92, and 101-131 under 35 U.S.C. § 101; we reverse the
Examiner's decision rejecting claims 91, 92, and 101-109 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement; we reverse the Examiner's decision rejecting claims 91 and
101-110, 112-121, 123-131 under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which the applicant regards as the invention; we sustain the
Examiner's decision rejecting claims 92, 111, and 122 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the applicant regards as the
invention; and we reverse the Examiner's decision rejecting claims 91, 92
and 101-131 based on obviousness under 35 U.S.C. § 103.
23
Appeal2017-002549
Application 11/3 82,469
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
24