Ex Parte Kokkinen

Patent Trial and Appeal Board

May 10, 2016

11734863 (P.T.A.B. May. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111734,863 04/13/2007
27799 7590 05/12/2016
Cozen O'Connor
277 Park A venue, 20th floor
NEW YORK, NY 10172
FIRST NAMED INVENTOR
Heikki Kokkinen
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.
6086-9/328065 1863
EXAMINER
KUCAB, JAMIE R
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
05/12/2016 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):
patentsecretary@cozen.com
patentdocket@cozen.com
patentsorter@cozen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEIKKI KOKKINEN
Appeal2013-010748 1
Application 11/734,8632
Technology Center 3600
Before TARA L. HUTCHINGS, SHEILA F. MCSHANE, and
MATTHEWS. MEYERS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-11, 14, 15, and 17-24. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("Br.," filed Sept. 24,
2012), the Examiner's Answer ("Ans.," mailed June 28, 2013), and Final
Office Action ("Final Act.," mailed Mar. 22, 2012).
2 Appellant identifies Nokia Corporation as the real party in interest. Br. 1.
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Application 11/734,863
CLAIMED fNVENTION
Appellant's claimed invention relates to "content and, more
particularly, to techniques for managing sharing, payment and/or rights of
distributed content." Spec. i-f 1.
Claim 1, reproduced below, is the sole independent claim, and is
illustrative of the subject matter on appeal:
1. A method, comprising:
determining, by a processor, one or more aspects of an
unauthorized copy of electronic content accessible to or through
a user device;
establishing an anonymous communication channel
between the user device and an authorization proxy for
legitimizing the electronic content; and
conducting, by the processor, a transaction between the
user device and the authorization proxy, over the anonymous
communication channel, to anonymously legitimize the
electronic content in view of the determined aspect(s).
REJECTIONS
Claims 1-11, 14, 15, and 17-24 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
Claim 1-5, 7-11, 14, 17, 20, and 22-24 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Williamson (US 2003/0028489, pub. Feb. 6,
2003) and Conrado (US 2009/0193249, pub. July 30, 2009).
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Claims 6, 15, 18, 19, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Williamson, Conrado, and Applicant-Admitted Prior Art
("AAPA"). 3
ANALYSIS
Written Description
We are not persuaded by Appellant's argument that the Examiner has
failed to provide a prima facie case for a rejection under 35 U.S.C. § 112,
first paragraph. Br. 2--4.
In the context of the written description requirement, an adequate
prima facie case must sufficiently explain what, in the Examiner's view, is
missing from the written description. Hyatt v. Dudas, 492 F.3d 1365, 1370
(Fed. Cir. 2007). New or amended claims which introduce elements or
limitations which are not supported by the as-filed disclosure violate the
written description requirement. See, e.g., In re Lukach, 442 F.2d 967
(CCPA 1971). Adequate written description means that Appellant's
Specification 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."' Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007) (citing
VasCath, Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991)).
"When no such description can be found in the [S]pecification, the only
thing the PTO can reasonably be expected to do is to point out its
nonexistence." Id. (citing In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996)).
3 The Examiner asserts that Appellant did not traverse the Examiner's
citation of Official Notice for the limitations recited in dependent claims 6,
15, 18, 19, and 21, and that the subject matter is deemed to be admitted prior
art. See Final Act. 7-11.
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The purpose of the written description requirement is to prevent an
applicant from later asserting that he invented that which he did not; the
applicant for a patent is therefore required "'to recount his invention in such
detail that his future claims can be determined to be encompassed within his
original creation."' Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d
1313, 1330 (Fed. Cir. 2003) (citing Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1561 (Fed. Cir. 1991)). The fundamental factual inquiry is whether
the specification conveys with reasonable clarity to those skilled in the art
that, as of the filing date sought, applicant was in possession of the invention
as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563---64. "[I]t is a
question [of] whether the application necessarily discloses that particular
device .... A description which renders obvious the invention for which an
earlier filing date is sought is not sufficient." Lockwood v. Am. Airlines,
Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (quoting Jepson v. Coleman, 314
F.2d 533,536 (CCPA 1963)).
Here, the Examiner notes that claim 1 has been amended to includethe
limitation "establishing an anonymous communication channel between the
user device and an authorization proxy for legitimizing the electronic
content." Final Act. 2. The Examiner finds that Appellant's Specification at
paragraph 7 6 identifies an anonymous communication, but that does not
serve to inherently disclose an anonymous communications channel. Id. at
3. The Examiner concludes that the elements "anonymous communication
channel" and "an authorization proxy" constitute new matter. Id. at 2-3.
Appellant contends that the use of an anonymization server through
which communication between the parties is conducted, as described at
paragraph 69 of the Specification, conveys with reasonable clarity to those
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Application 11/734,863
skilled in the art that, as of the filing date, Appellant was in possession of the
claimed invention, including "establishing an anonymous communication
channel between the user device and an authorization proxy for legitimizing
the electronic content," as recited in independent claim 1. Br. 4--5.
However, the Examiner explains that there are multiple ways that
anonymous communications can be accomplished, and "an anonymous
communication channel is a specific type of anonymous communication
means that might be employed by an anonymization server." Ans. 14--15.
The Examiner finds that the use of an anonymization server is therefore
insufficient support for the claimed anonymous communication channel.
Ans. 15.
Here, we are not persuaded by the weight of the evidence that an
anonymous communications channel is expressly, implicitly, or inherently
disclosed in the Specification in a manner sufficient to demonstrate
possession. Therefore, we sustain the Examiner's rejection of independent
claim 1 and claims 2-11, 14, 15, and 1 7-24, which depend therefrom, under
35 U.S.C. § 112, first paragraph.
Obviousness
Independent claim 1 and dependent claims 2-5, 7-11, 14, 17, 20, and 22-24
We are not persuaded by Appellant's argument that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 103(a) because neither
Williamson nor Conrado, alone or in combination, discloses or suggests
"conducting, by the processor, a transaction between the user device and the
authorization proxy, over the anonymous communication channel, to
anonymously legitimize the electronic content in view of the determined
aspect(s)," as recited in claim 1. Br. 7-10. The Examiner cites Williamson
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as disclosing conducting, by the processor, a transaction between the user
device and the authorization proxy to legitimize the electronic content in
view of the determined aspect(s). Final Act. 4 (citing Williamson i-f 62).
However, the Examiner acknowledges that Williamson does not explicitly
disclose that the communication is accomplished anonymously via an
anonymous communication channel, and the Examiner cites Conrado to cure
the deficiency. Id. (citing Conrado i-f 28).
Williamson is intended to provide an improved approach to the issue
of dealing with unauthorized copying of electronic content by members of
the public. Williamson i-f 11. When a consumer has copies of content that
have not been paid for and expresses a wish to purchase a genuine copy of
the content, a content management program connects the consumer to a
payment/negotiation module of a contract/ownership service. Id. i-f 62. The
consumer negotiates a new contract, the new contract is lodged in a license
bank, and the license data embedded in the content at issue is updated. Id.
Conrado discloses that when a user wants to buy rights to access
content, the user contacts the content provider via an anonymous channel
requesting the rights. Conrado i-f 28. After an anonymous payment scheme
has been conducted, the user sends his public key to the content provider,
and the content provider creates a license for the content. Id.
Appellant argues that the rejection of claim 1 is improper because
Williamson "merely teaches payment by a user identified by a sniff er
program as holding copies of unlicensed content," and Conrado "simply
teaches using a public key to request rights from a content provider." Br. 9.
Appellant contends that the combination "at best suggests payment by a user
identified by a sniffer program as holding copies of unlicensed content by
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retrieving license data in a manner invisible to the user, not, to
anonymously legitimize." Id.
Appellant further argues that the proposed modification of Williamson
by Conrado would render Williamson unsatisfactory for its intended
purpose. Id. More particularly, Appellant contends that Williamson is
directed to a way of determining content ownership, and asserts that keeping
an identity of a user secret, as disclosed by Conrado, would render
Williamson unsatisfactory for its intended purpose of determining content
ownership. Id. (citing Williamson i-f 70, Conrado Abstract).
However, the Examiner finds, and we agree, that Williamson is
directed to providing an improved approach to the issue of dealing with
unauthorized copying of electronic content by members of the public, and
that each of Williamson and Conrado is designed to move licenses from
content providers to user devices. See Ans. 1 7.
In our view, modifying Williamson to include an anonymous
communication channel, as disclosed by Conrado, is no more than a
combination of prior art elements according to their established functions,
and yields a predictable result. See KSR Int'! Co. v. Teleflex, Inc., 550 U.S.
398, 416 (2007) ("The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.").
Therefore, we sustain the Examiner's rejection of independent claim 1
under 35 U.S.C. § 103(a). We also sustain the Examiner's rejection of
dependent claims 2-5, 8-11, 14, 17, 20, and 22-24, which are not argued
separately.
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Dependent claim 7
We are not persuaded by Appellant's argument that the Examiner
erred in rejecting claim 7, which depends from claim 1, because "the
Examiner fails to communicate any basis for such a rejection." Br. 6.
In In re Jung, 637 F.3d 1356 (Fed. Cir. 2011), the Federal Circuit held
that, during prosecution, an Examiner is governed by 35 U.S.C. § 132,
which requires notification to an applicant of the reasons for a rejection with
"such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application." Jung, 637 F.3d
at 1362 (quoting Chester v. Miller, 906 F.2d 1574, 1578 (1990)). The
statute requires only that "an applicant at least be informed of the broad
statutory basis for the rejection of his claims, so that he may determine what
the issues are on which he can or should produce evidence." Id.
Here, the Examiner rejects claims 1 and 7 under 35 U.S.C. § 103(a) as
unpatentable over Williamson and Conrado. Final Act. 3. In rejecting
independent claim 1, the Examiner cites specific portions of the references
that are the bases for the rejection, including paragraphs 60 and 62 and
Figure 3 of Williamson. See Final Act. 3--4. For example, paragraph 60 of
Williamson describes retrieving license data embedded electronic content
stored in a local library of a user device 80. And paragraph 62 of Williams
discloses updating the license data embedded in the electronic content stored
on the user device 80.
The Examiner finds that Williamson discloses "'license data
embedded in the metadata of,"' and "accessible to or through a user device[,
i.e.,] client machine 80[.]" Final Act. 3 (citing Williamson, Figs. 2-3, i-fi-160,
62). The Examiner further finds that Williamson discloses updating the
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license data after negotiations with a consumer to legitimize unauthorized
electronic content. Id. at 3--4 (citing Williamson i-f 62). In the Answer, the
Examiner clarifies that paragraph 60 and Figure 3 of Williamson disclose the
limitation recited in claim 7. Ans. 16.
We find that the Examiner's rejection satisfies the notice requirement
of§ 132, and establishes a prima facie case of unpatentability. Appellant
fails to persuasively rebut the Examiner's prima facie case in the Appeal
Brief, and does not file a Reply Brief.
Therefore, we sustain Examiner's rejection of claim 7 under 35 U.S.C.
§ 103(a).
Dependent claim 6, 15, 18, 19, and 21
We are not persuaded that the Examiner's reliance on Official Notice
is improper. Br. 10-12. Appellant argues that the Examiner should be
required to provide support for each and every taking of Official Notice.
Yet Appellant has not come forth with any information or argument that, on
its face, casts reasonable doubt regarding the justification of the Official
Notice. See In re Boon, 439 F.2d 724, 728 (CCPA 1971) (an applicant has
the right to challenge the official notice and demand production of evidence
in support thereof, provided such challenge is accompanied by adequate
information or argument that, on its face, creates a reasonable doubt
regarding the circumstances justifying the official notice). Appellant has,
thus, failed to adequately traverse the Examiner's taking of Official Notice,
so as to require the Examiner to produce documentary evidence in support of
the Examiner's finding. See In re Ahlert, 424 F.2d 1088, 1091 (CCPA
1970) (where an applicant for a patent has failed to challenge a fact officially
noticed by the Examiner, and it is clear that the applicant has been amply
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apprised of such finding so as to have the opportunity to make such
challenge, the Examiner's finding shall be considered conclusive); In re
Chevenard, 139 F.2d 711, 713 (CCPA 1943) (if an applicant does not
seasonably traverse the taking of official notice, then the object of the
official notice is taken to be admitted prior art).
Therefore, we sustain the Examiner's rejection of dependent claims 6,
15, 18, 19, and 21under35 U.S.C. § 103(a).
DECISION
The Examiner's rejection of claims 1-11, 14, 15, and 17-24 under
35 U.S.C. § 112, first paragraph, is affirmed
The Examiner's rejections of claims 1-11, 14, 15, and 17-24 under
35 U.S.C. § 103(a) are affirmed.
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
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