Ex Parte Lester

Patent Trial and Appeal Board

Oct 18, 2018

11423688 (P.T.A.B. Oct. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/423,688 06/12/2006
121363 7590 10/22/2018
Shook, Hardy & Bacon L.L.P.
(Adobe Systems Incorporated)
Intellectual Property Department
2555 Grand Blvd
Kansas City, MO 64108
FIRST NAMED INVENTOR
James Lester
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.
B206/ADBS.209191 6299
EXAMINER
NEUBIG, MARGARET M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
10/22/2018 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
nhensley@shb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES LESTER
Appeal 2017-005491 1
Application 11/423,6882
Technology Center 3600
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN and
KENNETH G. SCHOPPER, Administrative Patent Judges.
MEDLOCK, 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 23-35. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
August 16, 2016) and Reply Brief ("Reply Br.," filed February 15, 2017),
and the Examiner's Answer ("Ans.," mailed December 15, 2016) and Final
Office Action ("Final Act.," mailed November 17, 2015).
2 Appellant identifies Adobe Systems Incorporated as the real party in
interest. App. Br. 4.
Appeal2017-005491
Application 11/423,688
CLAIMED INVENTION
Appellant's claimed invention "relates generally to the field of digital
rights management, and more particularly to controlling access to digital
content" (Spec. ,r 1 ).
Claims 23 and 30 are the independent claims on appeal. Claim 23,
reproduced below, is illustrative of the claimed subject matter:
23. A computer-implemented method, comprising:
opening, by a reader application, a unit of digital content,
the reader application in communication with a digital rights
management system;
accessing, by the reader application, a trusted code
information comprised in the unit of digital content;
in response to determining, by the reader application, that
a trusted code is not trusted by the digital rights management
system to access the unit of digital content, determining, by the
reader application, based on the trusted code information,
whether the trusted code is trusted to access the unit of digital
content; and
in response to determining, by the reader application, that
the trusted code information indicates that the trusted code is
trusted to access the unit of digital content, enabling, by the
reader application, the trusted code to access the unit of digital
content.
REJECTIONS
Claims 23-35 are rejected under 35 U.S.C. § 112, second paragraph,
as indefinite for failing to particularly point out and distinctly claim the
subject matter that Appellant regards as the invention.
Claims 23-35 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Ginter et al. (US 5,892,900, iss. Apr. 6, 1999) ("Ginter") and
Hansen et al. (US 2005/0262568 Al, pub. Nov. 24, 2005) ("Hansen").
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Application 11/423,688
ANALYSIS
Indefiniteness
Independent Claim 23 and Dependent Claims 24-29
In rejecting independent claim 23 under 35 U.S.C. § 112, second
paragraph, the Examiner maintains that the limitation,
in response to determining, by the reader application, that a
trusted code is not trusted by the digital rights management
system to access the unit of digital content, determining, by the
reader application, based on the trusted code information,
whether the trusted code is trusted to access the unit of digital
content[,]
as recited in claim 23, is unclear and, therefore, indefinite because "[ t ]his
limitation first recites the trusted code is not trusted by the digital rights
management system, but then more broadly recites that the code is trusted to
access the content" (Final Act. 5). The Examiner asserts that dependent
claims 24--29 "inherit the same deficiency, and are rejected for the same
reason" (id.).
Appellant argues, and we agree, that a person of ordinary skill in the
art would understand from the Specification, specifically including
paragraph 24, that "trusted by the digital rights management system" and
"trusted to access the unit of digital content [based on the trusted code
information]" are neither identical nor mutually exclusive, but instead are
different concepts and different in substance (App. Br. 17). A person skilled
in the art would, thus, understand what is claimed when the claim is read in
light of the Specification; i.e., that a creator of a unit of digital content may
specify a trusted code that is trusted to access the unit of digital content,
although the trusted code is not trusted by the digital rights management
system as a whole (see, e.g., Spec. ,r 24).
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Therefore, we do not sustain the Examiner's rejection of claims 23-29
under§ 112, second paragraph, as indefinite, on this basis. See
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576
(Fed. Cir. 1986) (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.").
Dependent Claims 25 and 35
The Examiner rejects dependent claims 25 and 35 under§ 112, second
paragraph, on the ground that "retrieving, by the reader application, a public
key and a digital certificate from the trusted code information," as recited in
claim 25, and similarly recited in claim 35, is unclear and, therefore,
indefinite because "[i]t is not clear if the key and certificate are contained in
the trusted code information, or if the key and certificate are retrieved by
means of the information contained in the trusted code information" (Final
Act. 5). But, we agree with Appellant that, rather than being unclear, the
claim language merely covers two possible implementations (App. Br. 18).
To the extent that the claim covers alternative methods for retrieving the key
and digital certificate, this relates to the breadth of the claim, and not to
indefiniteness. See, e.g., In re Miller, 441 F.2d 689,693 (CCPA 1971)
("Breadth is not ... indefiniteness.").
Dependent Claims 26 and 28
Appellant does not provide any response to the Examiner's separate
rejection of claims 26 and 28 under 35 U.S.C. § 112, second paragraph.
Therefore, we summarily sustain the Examiner's rejection.
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Application 11/423,688
Independent Claim 30 and Dependent Claims 31-35
Independent claim 3 0 includes language substantially similar to the
language of claim 23, and is rejected as indefinite based on substantially the
same rationale applied with respect to claim 23 (Final Act. 6). Therefore,
we do not sustain the Examiner's rejection of claims 30-35 for the same
reasons set forth above with respect to claim 23.
Obviousness
Independent Claim 23 and Dependent Claims 24-29
In rejecting claim 23 under 35 U.S.C. § 103(a), the Examiner cites
Ginter as disclosing substantially all of the claim limitations, including "in
response to determining, by the reader application, that the trusted code
information indicates that the trusted code is trusted to access the unit of
digital content, enabling, by the reader application, the trusted code to access
the unit of digital content," as recited in the claim (Final Act. 7). The
Examiner, in the Final Office Action, cites column 94, lines 12-36;
column 95, lines 8-37; column 119, lines 37--40; column 146, lines 31---67;
column 147, lines 5-17; column 148, lines 24--29; column 170, lines 1-37;
column 212, lines 17-23; and column 220, lines 1--40 of Ginter as disclosing
this limitation (id.). And, in the Answer, the Examiner directs our attention
to additional portions of the Ginter disclosure ( Ans. 12-14 ( citing Ginter,
col. 9, 11. 18-24; col. 10, 1. 64- col. 11, 1. 6; col. 12, 11. 39--42; col. 82,
11. 55-58; col. 83, 11. 50-55; col. 90, 11. 1-29; col. 92, 1. 63 - col. 93, 1. 2;
col. 94, 11. 5-24; col. 95, 11. 16-30; col. 146, 11. 31---60; and col. 147, 11. 12-
16)).
We have carefully reviewed the cited portions of Ginter, on which the
Examiner relies. And we agree with Appellant that there is nothing cited
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that discloses or suggests "enabling, by the reader application, the trusted
code to access the unit of digital content," if trusted code information
comprised in the unit of digital content indicates that the trusted code is
trusted to access the unit of digital content, as called for in claim 23 (App.
Br. 22-23; see also Reply Br. 9-10).
The Examiner, as Appellant observes, ostensibly equates the "control
information" in Ginter to the "trusted code information" in claim 23 (Reply
Br. 9 (citing Ans. 14)). However, we find nothing in the cited portions of
Ginter that discloses or suggests that the control information is analogous to
the claimed "trusted code information," i.e., that it indicates that a trusted
code is trusted to access a unit of digital content. To the contrary, it clearly
appears from the disclosure that Ginter's control information is different in
that it specifies the requirements that must be satisfied, i.e., the load modules
and mediating data that must be available, before distributed virtual
distribution environment ("VDE") controlled content can be accessed
(Ginter, col. 11, 11. 2-12).
The Examiner acknowledges that Ginter "does not specifically
disclose the reader application determining the code is trusted if the DRMOS
does not trust it," i.e., "in response to determining ... that a trusted code is
not trusted by the digital rights management system to access the unit of
digital content, determining ... based on the trusted code information,
whether the trusted code is trusted to access the unit of digital content," as
recited in claim 23 (Final Act. 7). And the Examiner cites Hansen to cure
the deficiency of Ginter (id. at 7-8 ( citing Hansen ,r,r 24, 25)).
Hansen is directed to a system and method for managing access to
protected content (Hansen, Abstract), and discloses an embodiment in
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Application 11/423,688
paragraphs 24 and 25, cited by the Examiner, that allows untrusted
applications, e.g., applications created by third-party developers and
downloaded to a communication device, to utilize digital rights management
protected ("DRM") content (Final Act. 7). Hansen discloses, with reference
to Figure 3, that system 300 includes one or more untrusted
applications 302, a file store 304 for storing one or more DRM protected
content 306, and one or more trusted applications 308 for managing access
of each DRM protected content by the untrusted application (Hansen ,r 24).
File store 304 includes, within the communication device's memory 206, a
protected region 310 and an unprotected region 312. Hansen discloses that
protected region 310 is only accessible by processes authorized by the
trusted applications, whereas unprotected region 312 stores unprotected
content that may be accessed by each untrusted application 302 without
restriction by the DRM protection operations of trusted applications 308 (id.
,r 25). Hansen, thus, describes that unprotected region 312 may be accessed
by any general software component running on the communication device
(id.).
We agree with Appellant that there is nothing in the cited paragraphs
of Hansen that discloses or suggests "in response to determining ... that a
trusted code is not trusted by the digital rights management system to access
the unit of digital content, determining ... based on the trusted code
information, whether the trusted code is trusted to access the unit of digital
content," as recited in claim 23 (App. Br. 20-22). Indeed, as Appellant
observes, Hansen would appear to have no need, in response to a
determination that a trusted code is not trusted by the digital rights
management system to access a unit of digital content, to determine
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"whether the trusted code is trusted to access the unit of digital content"
because "each untrusted application 302 can access the content stored in the
unprotected region 312" without restriction by the DRM protection
operations (id. at 21 ).
Responding to Appellant's arguments in the Answer, the Examiner
asserts that Appellant is describing an embodiment not referenced by the
Examiner, and that the Examiner has referenced a different embodiment of
Hansen, which discloses the argued limitation (Ans. 11 ). Yet the portion of
Hansen to which the Examiner refers, i.e., paragraph 25, refers to the same
embodiment cited by the Examiner in the Final Office Action (see Final
Act. 7-8 (citing Hansen ,r,r 24, 25, 11. 19-22)) and described by Appellant in
the Appeal Brief.
The Examiner quote lines 16-22 of Hansen's paragraph 25, and
summarily asserts that "Hansen does therefore disclose determining, by the
reader application, based on the trusted code information, whether the
trusted code is trusted to access the unit of digital content as recited in
claim 23" (Ans. 11-12). But we fail to see how, and the Examiner does not
explain how, the quoted portion of Hansen discloses this claim limitation.
In view of the foregoing, we determine that the Examiner has not
established that the art of record teaches or otherwise renders obvious either
of the conditions recited in claim 23, i.e., either "in response to determining"
step. Thus, we do not sustain the Examiner's rejection of independent
claim 23. For the same reasons, we also do not sustain the Examiner's
rejection of dependent claims 24--29. Cf In re Fritch, 972 F.2d 1260, 1266
(Fed. Cir. 1992) ("dependent claims are nonobvious if the independent
claims from which they depend are nonobvious.").
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Application 11/423,688
Independent Claim 30 and Dependent Claims 31-35
Independent claim 3 0 includes language substantially similar to the
language of claim 23, and stands rejected based on substantially the same
rationale applied with respect to claim 23 (Final Act. 10-11; see also
Ans. 20-21). Therefore, we do not sustain the Examiner's rejection under
35 U.S.C. § 103(a) of independent claim 30, and claims 31-35, which
depend therefrom, for the same reasons set forth above with respect to
claim 23.
DECISION
The Examiner's rejection of claims 23-25, 27, and 29-35 under
35 U.S.C. § 112, second paragraph, is reversed.
The Examiner's rejection of claims 26 and 28 under 35 U.S.C. § 112,
second paragraph, is affirmed.
The Examiner's rejection of claims 23-35 under 35 U.S.C. § 103(a) is
reversed.
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-IN-PART
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