Ex Parte Gilliam et al

Patent Trial and Appeal Board

Mar 22, 2016

10452920 (P.T.A.B. Mar. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/452,920
98804 7590
Reed Smith LLP
P.O. Box488
Pittsburgh, PA 15230
0610312003
03/24/2016
FIRST NAMED INVENTOR
Charles P. Gilliam
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.
10-524-US-Pl-P3 7585
EXAMINER
SHERR, MARIA CRISTI OWEN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/24/2016 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):
ptoipinbox@reedsmith.com
mskaufman@reedsmith.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES P. GILLIAM, XIN WANG, EDGARDO
VALENZUELA, BIJAN TADA YON, JOSE ROMERO-LOBO, and
GUILLERMO LAO
Appeal2013-005417
Application 10/452,920
Technology Center 3600
Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-24, 26-36, 64, and 65 which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal2013-005417
Application 10/452,920
THE INVENTION
The Appellants' claimed invention is directed to system and method
for digital rights management (Spec., para. 3). Claim 1, reproduced below,
is representative of the subject matter on appeal.
1. A computer-implemented method for enforcing rights
specifying manners of use of an item among a plurality of
repositories, said method comprising:
specifying, by a recipient repository, a first rights expression
indicating at least one of a desired manner of use of an item and a
condition of use of said item, said rights expression being
computer-readable;
associating, by said recipient repository, said rights expression
with said item;
receiving, by said recipient repository, offers from a plurality of
supplier repositories to supply said item to said recipient repository in
accordance with said rights expression, said offers being computer-
readable;
selecting, by said recipient repository, one of said offers from
said supplier repositories to accept;
receiving, by said recipient repository, said item from a supplier
repository associated with said accepted offer; and
using, by said recipient repository, said item in accordance with
said rights expression.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 23, 24, and 26-36 are rejected under 35 U.S.C. § 102(b)
as anticipated by Maggioncalda (U.S. 6,012,044, iss. Jan. 4, 2000).
2. Claims 1-36 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Feezel (U.S. 6,253,189 Bl, iss. Jun. 26, 2001) and Downs
(U.S. 6,226,618 Bl, May 1, 2001).
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Appeal2013-005417
Application 10/452,920
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 evidence1.
ANALYSIS
Rejection under 35 U.S. C. § 102(b)
The Examiner has determined that claim 23 recites instructions that
are not functionally related to the medium and the processor (Ans. 5-6). The
Examiner had determined that Maggioncalda discloses a medium storing
instructions meeting the limitations of claim 23 (Ans. 5).
In contrast, the Appellants argue that the rejection is improper (Br. 4-
7).
We agree with the Appellants. Claim 23 is directed to a system in
which a "processor" is coupled to at least "one memory device" and the
memory device has "instructions recorded thereon for causing the processor
to perform steps" corresponding to the instructions which recite a function.
Here, in the claim, the instructions recite a function for the processor to be
capable of performing. Here there has been no citations to Maggioncalda to
show that these recited functions can be performed. Accordingly, the
rejection of claim 23 and its dependent claims under this rejection is not
sustained.
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2013-005417
Application 10/452,920
Rejection under 35 U.S.C. § j03(a)
The Appellants argue that the rejection of claim 1 is improper because
that the prior art fails to disclose claim limitations for: 1) "a first rights
expression indicating at least one of a desired manner of use of an item and a
condition of use of said item", that the repository 2) receives "offers from a
plurality of supplier repositories to supply said item to said recipient
repository in accordance with said rights expression", and 3) receives "said
item from a supplier repository associated with said accepted offer" ( Br. 10-
15).
In contrast, the Examiner has determined that the rejection is proper
and that the cited claim limitations are found in F eezel at col. 9: 50-60, 12: 1-
17; Downs at col. 9:30-50, 11:30-55, col. 23:20-40, Feezel at col. 12:1-17;
and Feezel at col. 9:30-50, col. 12:12-45, and col. 23:20-40, respectively
(Ans. 6, 7, 13-15).
We agree with the Examiner. The Appellants first argue that the prior
art fails to disclose the claim limitation for specifying "a first rights
expression indicating at least one of a desired manner of use of an item and a
condition of use of said item" (Br. 10, 11). Here, Feezel at col. 9:50-60
discloses bids for an advertisement that identifies the time slot for sale.
Here, in this citation to F eezel, the use of that particular time slot would be a
"condition" as claimed.
The Appellants next argue that the prior art fails to disclose receiving
"offers from a plurality of supplier repositories to supply said item to said
recipient repository in accordance with said rights expression" (Br. 10, 12).
However, Feezel at col. 12: 1-17 discloses that the buyer is informed of the
offers corresponding to the buyers bid meeting the cited claim limitation.
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Appeal2013-005417
Application 10/452,920
The Appellants next argue that the prior art fails to disclose receiving
"said item from a supplier repository associated with said accepted offer"
(Br. 10, 12). However, Feezel at col. 12:25-45 discloses that the broadcaster
receives the advertisement meeting the argued claim limitation.
The Appellants also argue that the prior art fails to disclose the claim
limitations for "associating, by said recipient repository, said rights
expression with said item" and "using, by said recipient repository, said item
in accordance with said rights expression" (Br. 13-15). However, here the
association of the advertisement time slot with the advertisement bid
accepted and using the advertisement as disclosed by the cited portions of
Feezel would meet those claim limitations as well.
As the argued claim limitations have been shown in the prior art, the
rejection of claim 1 is sustained. The remaining claims contain a similar
limitation and the rejection of these claims is sustained for the same reasons
given above.
CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 23, 24, and 26-36 under 35 U.S.C. § 102(b) as listed in the
Rejection above.
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1-3 6 under 3 5 U.S. C. § 10 3 (a) as listed in the Rejection
above.
DECISION
The Examiner's rejection of claims 1-3 6 is sustained.
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Appeal2013-005417
Application 10/452,920
AFFIRMED
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