Ex Parte Hwang et al

Patent Trial and Appeal Board

Mar 14, 2018

13216771 (P.T.A.B. Mar. 14, 2018)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SUNG-OH HWANG and
SERGEY NIKOLAYEVICH SELEZNEV
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Appeal 2016-008320
Application 13/216,7711
Technology Center 3600
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Before ALLEN R. MacDONALD, NABEEL U. KHAN, and
AMBER L. HAGY, Administrative Patent Judges.

KHAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1–6, 8–13, and 15. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellants identify Samsung Electronics Co. Ltd., as the real party in
interest. App. Br. 1.

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STATEMENT OF THE CASE
THE INVENTION
According to Appellants, the invention relates to
A method and device for enforcing advertisement viewing
. . . . When there is a play request for contents, it is determined
whether there is a common Rights Object (RO) linked with an
RO of the requested contents. When there is a common RO,
information about consumption of advertisements on a plurality
of contents is obtained from the common RO. At least one
advertisement linked with the requested contents is played on the
basis of the obtained information.
Abstract.
Exemplary independent claim 1 is reproduced below.
1. A method for enforcing advertisement viewing in a device,
comprising the steps of:
searching for a Rights Object (RO) of a requested contents
in response to a play request for the requested contents, the RO
including right and restriction applicable to advertisement on the
requested contents;
determining whether a common RO linked with the RO
exists, at a Digital Rights Management (DRM) agent of the
device;
when the common RO linked with the RO exists,
analyzing the common RO that includes common right and
restriction applicable in common to advertisements on a plurality
of different contents;
obtaining information about consumption of the
advertisements on the plurality of different contents from the
common RO, at the DRM agent of the device and playing at least
one of the advertisements linked with the requested contents
based on the information from the common RO, at the
multimedia player of the device; and
when the common RO linked with the RO does not exist,
detecting an advertisement linked with the requested contents
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from the RO of the requested contents, at the DRM agent of the
device, and playing the advertisement, at a multimedia player of
the device,
wherein the common RO is a parent right object of the RO.

REFERENCES AND REJECTIONS
1. Claims 1–6 and 9–13 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over D’Amore (US 2009/0198542 A1, Aug. 6, 2009) and
Aaltonen (US 2008/0270242 A1, Oct. 30, 2008). Final Act. 5–9.
2. Claims 8 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over D’Amore, Aaltonen, and Webster (US 2009/0094160 A1,
Apr. 9, 2009). Final Act. 9.
ANALYSIS
Rejection of Claims under 35 U.S.C. § 103(a)
The Examiner finds D’Amore discloses “determining whether a
common RO linked with the RO exists.” Final Act. 5 (citing D’Amore
¶¶ 47, 48, 50, 58). Specifically, the Examiner finds D’Amore discloses a
Rights Object with an embedded advertising metadata object that can locate
advertising based rights rules. Ans. 13–14 (citing D’Amore ¶¶ 48, 49).
Thus, the Examiner finds, advertising-based rights are linked to D’Amore’s
Rights Object via the embedded advertising metadata object. Ans. 14.
Appellants argue “D’Amore does not disclose, teach, or suggest
determining if a first rights object is linked to a second rights object . . .
where the second rights object includes common right and restriction
applicable in common to advertisements on a plurality of different contents.”
App. Br. 9.
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We are persuaded by Appellants’ argument. The Examiner finds the
term “common RO” is not defined within the Specification and that the
description of common RO in the Specification does not place any
meaningful limitation on the scope of the term “common RO.” Ans. 13.
Based on a broad interpretation of “common RO,” the Examiner finds
D’Amore’s Rights Object corresponds with the claimed Rights Object and
D’Amore’s embedded advertising metadata object for locating advertising
based rights rules corresponds with the claimed common RO. Ans. 13–14.
We disagree, however, with the Examiner’s interpretation of
“common RO.” Claim 1 recites the common RO “includes common right
and restriction applicable in common to advertisements on a plurality of
different contents.” App. Br. 16 (Clams App’x) (emphasis added).
Similarly, the Specification describes a common RO as “represent[ing]
common right and control conditions for enforcing an advertisement on a
plurality of contents in common.” Spec. 7:21–22 (emphasis added). The
Specification describes the benefit of a common RO as allowing control of
advertisements linked to a plurality of contents using “only one common RO
without the need to separately give a right and a restriction to each RO.”
Spec. 7:25. Thus “[t]he right and the restriction can be updated by updating
only the common RO.” Spec. 7:26. An interpretation that ignores the above
claim language and disclosure is unreasonably broad. We interpret a
“common RO” as representing common rights and restrictions for enforcing
advertisement on a plurality of contents.
We agree with Appellants that the advertising rights delineated by
D’Amore’s advertising metadata object is not disclosed as pertaining to a
plurality of contents. For example, D’Amore discloses “[t]he advertising
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based rights object . . . can provide the user with options to select the most
desirable or acceptable advertising package to match a given piece of
content.” D’Amore ¶ 50; see also D’Amore ¶ 58 (“system 100 can be
configured to display content from multiple sources and each of the sources
can have its own advertising rights object”). Thus the advertising rights are
not common to a plurality of contents but are specific to each content.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1 and 9 nor their pending dependent claims.
Other Issues
The Examiner finds claims 9, 10, 11, and 15 include means-plus-
function limitations and therefore invoke 35 U.S.C. § 112(f). Final Act. 4.
Specifically, the Examiner finds the term “Digital Rights Management
(DRM) agent” is essentially a substitute for the word “means” because it is
“not a recognized piece of structure and serves as a placeholder for the
subsequent recitation of functional language.” Final Act. 4.
Appellants dispute the Examiner’s interpretation arguing the term
“DRM agent” is defined by the Open Mobile Alliance Digital Rights
Management Architecture and that one of ordinary skill would understand
the term as a name for known structure. App. Br. 7; see also Reply Br. 15.
We note, however, that none of the Examiner’s rejections are based
on such an interpretation (e.g. the Examiner does not reject any claims as
indefinite under 35 U.S.C. § 112(b) for failing to disclose adequate
corresponding structure). Thus, in our discretion, we decline to address the
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merits of Appellants’ arguments with respect to the Examiner’s claim
interpretation.2

DECISION
The Examiner’s rejection of claims 1–6, 8–13, and 15 is reversed.

REVERSED

2 In the event of further prosecution, the Examiner may want to determine
whether the Specification discloses structure corresponding to the identified
means-plus-function limitations of claims 9–11 and 15 (e.g., “Digital Rights
Management (ORM) agent”), and if so, identify that structure, as part of the
§ 112(f) analysis. The Examiner may additionally want to determine
whether claim 1 also invokes 35 U.S.C. § 112(f) as it recites “a Digital
Rights Management (DRM) agent of the device.” See Twin Peaks Software
Inc. v. IBM Corporation, 690 Fed.Appx. 656, 661–64 (2017) (method
claim’s “mechanism for managing” construed under § 112 ¶ 6, and found
indefinite).