Ex Parte Kraft et al

Patent Trial and Appeal Board

Dec 18, 2014

12256943 (P.T.A.B. Dec. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHRISTIAN ROSSING KRAFT and
JOAKIM CHRISTOFFERSSON
____________________

Appeal 2012-006624
Application 12/256,9431
Technology Center 3600
____________________

Before: BIBHU R. MOHANTY, MICHAEL W. KIM, and
NINA L. MEDLOCK, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–20 and 372. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 The real party in interest, according to Appellants, is Nokia Corporation.
Appeal Br. 1. However, the assignee of record, on file with the USPTO is
2011 Intellectual Property Asset Trust, based on a transaction recorded
October 26, 2011. See Reel/Frame 027121/0353.
2 Claims 21–36 are withdrawn. Appeal Br. 1.
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Appellants’ invention “relates generally to a method and apparatus for
transferring media.” Spec. ¶ 1.
Claim 1 is representative of the claims on appeal:
1. An apparatus, comprising:
at least one processor; and
at least one memory including computer program code
for one or more programs;
the at least one memory and the computer program code
configured to, with the at least one processor, cause the
apparatus to perform at least the following,
determine to disable a right for at least one media;
cause, at least in part, transmission of a communication
for at least one new media;
the communication indicating the disabled right of at
least one media; and
receive the at least one new media.

Appellants appeal the following rejections:3
Claims 1–20 and 37 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.4
Claims 1–20 and 37 are rejected under 35 U.S.C. § 102(b) as
anticipated by Fontijn (US 2006/0229989 A1, pub. Oct. 12, 2006).

3 With respect to each of the rejections below, Appellants state that claims
1–20 and 27 are rejected (Appeal Br. 4–5), however, this appears to be a
typographical error, as the Examiner’s rejections are directed to claims 1–20
and 37 (Ans. 5, 6, and 11).
4 The Examiner withdrew-in-part a rejection under 35 U.S.C. § 112, first
paragraph, specifically related to independent claim 37 (Ans. 4), however,
claim 37 still stands rejected under the instant rejection (see Ans. 5–6).
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Claims 1–20 and 37 are alternatively rejected under 35 U.S.C.
§ 103(a) as unpatentable over Fontijn and Ebihara (US 2006/0059105 A1,
pub. Mar. 16, 2006).

FINDINGS OF FACT
Specification
1. The Specification does not provide a lexicographic definition of
“disable.”
2. The Specification discloses that “[t]he processor may disable a
right, such as a DRM right, associated with the media identifier to render the
media inoperable or unusable” (Spec. ¶ 47).
3. The Specification does not provide a lexicographic definition of
“communication.”
4. The Specification describes that “communication 230
comprises an identifier for a new media 215c, a payment, a credit, a
confirmation of disabling, a name of a media, a fee, a previously earned
credit, a half credit and a fee, and/or the like” (Spec. ¶ 30).

Fontijn
5. Fontijn is directed to a system for enabling peer to peer
exchanges of copyrighted digital content associated with valid digital rights
by attaching a trading value to the sold digital content. Fontijn describes
that its DRM system controls the transfer of rights and content (Fontijn
¶ 13).
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6. Fontijn discloses:
[a] consumer has some songs and associated rights stored in her
MP3 player 21. Her friend gets to listen to the songs and
suggests a trade of a song AF1 stored in the MP3 player 21 for
a song AF2 stored in the mobile phone 22 of the friend. A
connection 23 is established between the MP3 player 21 and the
mobile phone 22. The DRM software executed by a
microprocessor 24, 25 implemented in each respective device
checks the trading value of the songs and performs a handshake
routine. The trading value equals, in this case, 100 for each
song. The DRM software of the MP3 player 21 effects the
transfer 26 of the song AF1 to the mobile phone 22 and the
DRM software of the mobile phone 22 effects the transfer 27 of
the song AF2 to the MP3 player 21. The rights which were
associated to the old content contained in each respective
device is now disassociated from said old content and
associated with the new content. It is in this case not necessary
to trade rights, since the two rights are identical to each other.
The trading 26, 27 of content can take place between any type
of devices having computing capabilities in the form of, for
example, a microprocessor, an ASIC or some type of
programmable logic and the appropriate DRM software
implemented.
(Fontijn ¶ 32; See also Fig. 2)(emphasis added).
7. Fontijn describes that once a trade is effected, the new song
(AF4) and its associated right will be transferred/downloaded to the new
owner (proprietor) (Fontijn ¶ 36).
8. Fontijn also describes that the other party to the trade (content
provider) can remove the songs (AF1, AF2, AF3) that were traded for AF4
because the new owner (content provider) now “‘owns’ them and their
associated rights” (Fontijn ¶ 37).
9. Fontijn describes that different songs have different trading
values, and in situations where one user’s trade value for a song(s) exceeds
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the other user’s trade value, the user loses the additional units of trading
value when the trade is effected (i.e., “the song [] and the associated right
will be transferred to the account of the proprietor”) (Fontijn ¶ 36).

ANALYSIS
Rejection of Claims 1–20 and 37under 35 U.S.C. § 112,
First Paragraph, Written Description Requirement
We are persuaded the Examiner erred in asserting that claims 1–20
and 37 fail to comply with the written description requirement of 35 U.S.C.
§ 112, first paragraph (Appeal Br. 5–7; Reply Br. 2–7). The Examiner
asserts that the Specification does not provide adequate written description
support for “[a]n apparatus . . . to perform . . . cause, at least in part,
transmission of a communication for at least one new media . . . ,” as recited
in independent claim 1, because there is insufficient evidence in Appellants’
Specification to support an apparatus to perform this “causal feature” (Ans.
6–7). In particular, the Examiner contends that the amended limitation
requires “an entity outside of the ‘apparatus’ [to] actually perform the
‘transmission’” (emphasis original), and as such, finds the limitation broader
than the embodiments disclosed in the Specification (Ans. 16–20). The
Examiner rejects independent claims 11 and 37 under this same rationale
(Ans. 6).
However, we agree with Appellants that the argued limitation does
not require an outside entity to perform the claimed “transmission of a
communication;” but rather, “it is the processor that can cause the
transmission through the transmitter” (Reply Br. 4–5). The Specification
discloses that that processor 20 may provide at least one signal to the
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transmitter 14 to transmit and receive content (Spec. ¶¶ 19, 24). Thus, we
are persuaded the Examiner’s rationale for rejecting independent claim 1 on
these grounds is incorrect.
For this reason, we do not sustain the rejection of independent claims
1, 11, and 37 under 35 U.S.C. § 112, first paragraph, as well as the rejection
of dependent claims 2–10 and 12–20.

Claims 1–20 and 37 under 35 U.S.C. § 102(b) as anticipated by Fontijn5
Claims 1–7, 9, 10– 17, 19, 20, and 27
We are not persuaded the Examiner erred in asserting that Fontijn
anticipates independent claim 1. Appeal Br. 8–11; Reply Br. 7–9.
Specifically, Appellants assert that Fontijn only teaches disassociating rights
from old content and associating rights with new content, and thus, cannot
meet the limitation of independent claim 1 related to “a communication
indicating the disabled right” (emphasis original). Appeal Br. 9–10. We
disagree.
Fontijn is directed to a system for enabling peer to peer exchanges of
copyrighted digital content associated with valid digital rights by attaching a
trading value to the sold digital content on each user’s electronic device.
FF 5. Fontijn describes that two users may trade songs (media) using digital
rights management software, present on each device, to effect the transfer of
the songs and their corresponding rights between users. FF 6. In particular,
Fontijn discloses that “[t]he rights which were associated to the old content

5 The Appellants argue independent claims 1, 11, and 37, and their
dependent claims 2–7, 9, 10, 12–17, 19, and 20 as a group (Appeal Br. 11–
12). We select independent claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
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contained in each respective device [are] now disassociated from said old
content and associated with the new content.” FF 6. Fontijn depicts this
transfer of rights occurring via communications 26 and 27 in Figure 2. See
also FF 6. Fontijn describes that this transfer allows each user to remove his
or her new songs because the new owner now “‘owns’ them and their
associated rights.” FF 7 and 8. Thus, we agree with the Examiner that
Fontijn discloses a “communication indicating the disabled right,” as
independent claim 1 requires. See Ans. 25–26. We note that this
interpretation is commensurate in scope with the language of independent
claim 1 and reasonable in light of Appellants’ Specification. See FF 3 and 4.
We also are not persuaded of error by Appellants’ argument that
Fontijn fails to disclose disabling the digital right, as Appellants argue is
required by independent claim 1. Appeal Br. 9–10; Reply Br. 8–9.
Specifically, Appellants assert that “associating and disassociating digital
rights from one content and associating it with another content,” as disclosed
in Fontijn, is not the same as “disabling,” as presently claimed, because
“disabling implies turning off the digital right of a content, which is still
associated with the content.” Reply Br. 8–9. However, independent claim 1
does not specifically recite a limitation where the right is disabled. That is,
claim 1 “determine[s] . . . to disable a right” and transmits a “communication
indicating the disabled right,” but does not recite with any particularity how
the right is disabled. Moreover, Appellants’ Specification does not provide a
lexicographic definition for the term “disable” (FF 1); but rather broadly
describes that it means “to render the media inoperable or unusable.” FF 2.
In that regard, Fontijn describes that once a trade is effected, the new song
and its associated right are transferred/downloaded to the new owner where
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the new owner can remove the songs because the new owner “‘owns’ them
and their associated rights.” FF 7 and 8. Thus, we agree with the Examiner
that the “associating” and “disassociating,” as described in Fontijn (FF 6, 7,
8), disable a right in manner commensurate with the scope of claim 1. We
also note that claim 1 only requires a “communication indicating the
disabled right,” and this indication does not require that all of the rights for
the song be disabled; but rather, only requires an indication of “the disabled
right.”
For this reason, we sustain the rejection of claims 1, 11, and 37 under
35 U.S.C. § 102(b), as well as the rejection of dependent claims 2–7, 9, 10,
12–17, 19, and 20.

Claims 8 and 18
We are not persuaded the Examiner erred in asserting that Fontijn
discloses “transmission of a credit for the at least one new media,” as recited
in dependent claims 8 and 18. Appeal Br. 11–12. Fontijn discloses that its
users exchange copyrighted digital content (media) associated with valid
digital rights by attaching a trading value to the sold digital content. FF 5.
Fontijn describes that users exchange trade value for songs when a trade is
effected. FF 6 and 9. Thus, Fontijn discloses “transmission of a credit for
the at least one new media.” See FF 4.
For this reason, we sustain the rejection of claims 8 and 18 under
35 U.S.C. § 102(b).

Appeal 2012-006624
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Claims 1–20 and 37 under 35 U.S.C. § 103(a) as unpatentable over
Fontijn and Ebihara
Affirmance of the anticipation rejection for claims 1–20 and 37 based
on Fontijn renders it unnecessary to reach the propriety of the Examiner’s
decision to reject those claims on a different basis. Cf. In re Gleave,
560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other rejections after
finding an anticipation rejection to be upheld). As such, we need not reach
the propriety of the rejection of claims 1–20 and 37 as unpatentable over
Fontijn and Ebihara.

DECISION
We REVERSE the rejection of claim 1–20 and 37 under 35 U.S.C.
§ 112, first paragraph as failing to comply with the written description
requirement.
We AFFIRM the rejection of claims 1–20 and 37 under 35 U.S.C.
§ 102(b).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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