Ex Parte Manchala

Board of Patent Appeals and Interferences

Sep 29, 2010

11174899 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/174,899 07/05/2005 Daniel W. Manchala A3612-US-NP/
XERX-P002US
3218
75957 7590 09/29/2010
MIELE LAW GROUP PC
277 Main Street, Suite 209
MARLBOROUGH, MA 01752
EXAMINER
ROSTAMI, MOHAMMAD S
ART UNIT PAPER NUMBER
2156
MAIL DATE DELIVERY MODE
09/29/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL W. MANCHALA
____________

Appeal 2009-014286
Application 11/174,899
Technology Center 2100
____________

Before JOSEPH L. DIXON, STEPHEN C. SIU, and JAMES R. HUGHES,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL 1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 1-20. The Appellant appeals
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

A. INVENTION
The invention at issue on appeal relates to a request for retracting
digital rights. To provide context, the entire system of Appellant’s disclosed
invention as shown in Figure 1 is repeated below.

[00022] The user computer system 100 is coupled to the
retracting computer system 21. The owner computer
system 200 is also coupled to the retracting computer
system 21. The retraction computer system 10 may
contain a plurality of user computer systems 100 and a
plurality of owner computer systems 200, and the
connections to any of these systems need not be
permanent. However, for ease of description, it will be
assumed in the following that the retraction computer
system 10 has one user computer system 100 and one
owner computer system 200.

[00023] The retracting computer system 21 includes a
retracting mechanism 20 that further comprises an
interface 30 and a retractor 40. The interface 30 receives
and communicates with other entities including user and
owner computer systems 100 and 200, respectively. The
retractor 40 oversees the retraction communications
between the user computer system 100 and the owner
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computer system 200, changes the attached usage rights
to the digital work 132, and removes the digital work 132
from the user computer system's 100 storage device 130
upon agreement of the user computer system 100 and
owner computer system 200.

[00024] The retractor 40 may return the retracted digital
work to the owner computer system 200 or send the
owner computer system 200 a confirmation of the
completed retraction of the digital work 132. The
retractor 40 may not physically retract the digital work
132 from the user computer system 100, but rather it may
render the work unusable. One way of rendering the
work unusable is removing or reducing the usage rights
attached to the digital work 132 in the user computer
system's 100 possession. A copy of the signed request
(indicating both parties' agreement to the retraction) may
also be attached to the unusable digital work remaining in
the user computer system's 100 possession in a similar
manner as the usage rights, e.g., glyph format, usage
right grammar.

[00025] In the illustrated embodiment, the user computer
system 100 includes a system interface 110, a user
processor 120, a storage device 130, and a media
mechanism 140. The system interface 110 facilitates
communication between the user computer system 100
and other entities, for example, the retracting computer
system 21, digital notary 60, financial server 70 and the
user. The user processor 120 further comprises a
financial transaction generator 122 and a request
generator 124. A financial transaction generator 122
sends a credit request to a financial server 70 to obtain a
credit for the return of the digital work 132 with unused
rights. The request generator 124 initiates a request to the
owner computer system 200 via retracting mechanism
20, as well as the retraction of the (e.g., pre-paid) rights
to the digital work 132 and the actual digital work 132
upon the agreement of the owner. The request generator
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124 allows the user to digitally sign the request in the
illustrated embodiment. The storage device 130 contains
at least one digital work. The media mechanism 140
allows the user to access the digital work using the usage
rights he or she has purchased.

(Spec. 4-5.)

B. ILLUSTRATIVE CLAIM
Claims 1 and 14, which further illustrate the invention, follow.

1. Apparatus comprising:

a user interface;

a media mechanism operable to provide user access to a given
digital work via the user interface in accordance with given associated
usage rights associated with the given digital work, the given
associated usage rights having been already associated with the given
digital work before when the media mechanism is operated to provide
the user access; and

a retraction request mechanism operable to request a retraction
of the given associated usage rights to the given digital work.

14. A method comprising:

a user accessing a given digital work via a user interface
in accordance with given associated usage rights associated with
the given digital work, the given associated usage rights having
been already associated with the given digital work before when
the user accesses the given digital work; and

requesting a retraction of the given associated usage
rights.

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C. REFERENCES
The Examiner relies on the following references as evidence:

Stefik US 7,200,574 B2 Apr. 3, 2007
Gilliam US 7,206,765 B2 Apr. 17, 2007

D. REJECTIONS
Claims 1-20 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Stefik in view of Gilliam.

II. ISSUE
Has the Examiner set forth a reasoned conclusion of obviousness of
independent claims 1, 14, and 18?

III. PRINCIPLES OF LAW
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he Examiner bears
the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). Furthermore,
“there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of
obviousness”. . . [H]owever, the analysis need not seek out
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precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)(quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The question of obviousness is "based on underlying factual
determinations including . . . what th[e] prior art teaches explicitly and
inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001).
"[T]he PTO gives claims their 'broadest reasonable interpretation.'"
In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt,
211 F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not
to be read into the claims from the specification." In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed.
Cir. 1989)).

IV. FINDINGS OF FACT
1. From Appellant’s Specification, interpretations of claim
terminology should be consistent with the following exemplary
interpretations:

[00012] In embodiments, "user" may be construed to be,
e.g. a person or entity that uses or incorporates another's
digital work in creating its own work or for its own
purposes; such as an editor, author, or publisher. An
"owner" may be a person or entity who possesses the
ownership rights regarding the use, distribution or
publication of a certain digital work, e.g., an author or a
distributor. The owner from whom the user purchased
usage rights may have transferred or sold those rights to
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another person or entity by the time the user seeks a
retraction of those paid rights. If so, in certain
embodiments, the user may need to interact with the new
owner.

[00013] In embodiments herein, a "digital work" or
"work" may, e.g., include digital information including,
e.g., an audio, video, text, or multimedia composition. In
embodiments, a digital work or work may further include
data, a program, or an interpreter necessary to access the
work. In embodiments, a digital work may be a collection
of digital works.

[00014] In embodiments described herein "usage rights"
or "rights" may be construed to be permissions granted to
the user from the owner. For example, they may specify
when and how a work may be used and/or whether a
work may be further distributed. The usage rights may
provide the user with the certain abilities regarding the
content of the digital work, e.g., print, edit, copy, and/or
use.

[00015] In embodiments, usage rights may be attached
to, embedded within or otherwise associated with the
digital work. The rights may have been previously paid
by the user (or someone else), or another type of
consideration may have been provided in return for the
usage rights.

[00016] Rights may be encoded into or otherwise
encapsulated into the digital work. For instance, usage
rights may be a statement attached to the digital work,
defined using usage rights grammar (e.g., as described in
US Pat. No. 5,715,403 to Stefik et al.), or encoded using
a glyph format.

[00017] In embodiments herein, the usage rights
information may not be perceived as part of the work.
For example, it may not be perceptible to the human eye
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if the work is a visual work, and not be audible to the
human ear if the work is an audible work.

[00018] The retraction of the usage rights to a digital
work may involve the return of part or all of the rights,
and in embodiments, the retraction may depend on
whether any of the rights were used by the user. In
embodiments, additional information otherwise
associated with the rights may be attached to or otherwise
associated with a digital work; such as a running tally on
the number of uses of the work or fee payment
information.

[00019] In embodiments, an application programming
interface (API) may be construed to be an interface
between one program on the one hand and another
program, an operating system, hardware and/or other
functionality on the other hand.

[00020] In embodiments herein, a "computer system"
may e.g., an individual computer or a network of
individual computers (e.g., laptops, desktops,
workstations, etc.) with appropriate operating systems
and application programs, or it may be any combination
or portion of such computing mechanisms.

[0054] Furthermore, transactions and retractions
described herein may refer to all of a digital work or any
part thereof, as well as a digital work that is a
compilation of other digital works.

These paragraphs of the Specification merely set forth exemplary
interpretations and do not set forth express definitions for interpreting the
claimed invention.

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2. From the Oral hearing transcript:
JUDGE DIXON: Well, didn't the Examiner rely upon in
column 6 the Meta rights, some other usage rights, manner of use
rights?
MR. MIELE: Interestingly, the Meta rights allow someone to
modify someone's ability to -- like -- it's almost like administrative
rights. I can give someone administrative rights. So, whatever you're
normally able to do to a work, now I can give you that right and I can
remove that right. So, if you have the right to set up usage rights for a
work, I could give you that right or remove that right.
JUDGE DIXON: But at the top of column 7 it uses words like
usage rights to -- usage rights such as rights to
MR. MIELE: Right. You know --
JUDGE DIXON: You mean surrender.
MR. MIELE: I don't think that --
JUDGE DIXON: That's not like retract?
MR. MIELE: Well, surrender -- you could --
JUDGE DIXON: You mean you're getting in the --
MR. MIELE: Well no, and I think --
JUDGE DIXON: Sounds like it.
MR. MIELE: I think that out of context this can take you off
target. I don't think it teaches retraction as specifically recited,
because a retraction that [we’re] talking about in the claims is
retraction of rights that have already been associated with the work.
Remember, Stefik's teaches that once you've associated the rights
they're fixed. You don't change them. I think that Gilliam teaches the
same thing. Once you associated the right with the work, you don't
change them once you do that.
JUDGE DIXON: But later in Gilliam, in column 11, they talk about
enforceable -- at column 11, line 19, they talk about an enforceable
property. They're talking about stocks and bonds, right to sell, buy,
sell?
MR. MIELE: Um-hum.
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JUDGE DIXON: Then further down in line 27, specify the usage
rights and conditions, the item ticket 134 also can be used to specify a
margin call, the ability to change the type of stock, such as common
or preferred, the ability to convert a stock option to regular stock, and
the like. I mean --
MR. MIELE: Right and that's a ticket, and that --
JUDGE DIXON: Isn't -- but isn't -- can't that be considered a
retraction request of certain rights? We don't -- the question is what
rights would we be retracting there? Couldn't changing from a -- one
stock type to another stock be retracting, one type of usage rights to
another type of usage rights, because they're different types of stocks?
So, we have exchanged one usage right for another so, we've
exchanged them essentially, so we've had to make a request to do that.
So we've terminated a request to terminate one type of usage rights to
then make a new type of usage rights in this type of SEC stock
exchange. Wouldn't it? I mean --
MR. MIELE: Well, there are different ways of getting similar
result to what we're claiming.

(Oral Transcript p. 3-5). (Emphasis added).

V. ANALYSIS
Claims 1-13
We note that Appellant's Brief argues limitations that the “retraction
request” was called for "by a user" and "changing the usage right." The
Examiner indicates that Appellant's arguments in the Brief fail to conform to
the claim language (see Answer 21-22). Appellant subsequently clarified
their arguments with respect to independent claim 1 in the Reply Brief, and
we have no response from the Examiner to those clarified arguments.
Therefore, we evaluate this appeal based upon the administrative posture
presented for appeal.
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The Examiner identifies at page 6-7 of the Answer that Stefik does not
teach a "retraction request mechanism operable to request a retraction of a
given associate usage flights [sic, rights] to a given digital work" and relies
upon the teachings of Gilliam with respect to "meta rights which can include
usage rights.
We agree with the Examiner that Appellant’s arguments in the Brief
are not based in the express claim language and therefore not persuasive of
error in the Examiner’s showing of obviousness with respect to independent
claim 1. Independent claim 1 sets forth "Apparatus comprising: a user
interface; a media mechanism operable to provide a user access to a given
digital work via the user interface…and a retraction request mechanism."
The remainder of independent claim 1 recites various limitations concerning
usage rights and a given digital work. We find the recited limitations
concerning the given digital work and the usage rights to be non-functional
descriptive material with respect to abstract constructs which are not defined
within claim 1. Therefore, we look to the Specification for clarification.
We find the Specification is merely drafted in the same abstract
terminology of "media mechanism" and "retraction request mechanism".
When asked at the oral hearing what the "media mechanism" was,
Appellant’s representative proffered that it was a "media player" (Transcript,
p. 6) but provided no citation to the Specification to support this
interpretation. We have been unable to find any direct support for this
proffered interpretation in Appellant’s Specification. Therefore, we are left
to speculate as to what the "media mechanism" would be. We accept,
arguendo, Appellant’s proffered interpretation and in evaluating the
teachings of Stefik and Gilliam thereto, we find Stefik and Gilliam clearly
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teach a "media player" and other memory devices which meet the claimed
“media mechanism operable to provide user access to a given digital work
via the user interface.” Appellant has not disputed that Stefik or Gilliam do
not have a media player of sorts. The Examiner has identified the meta-
rights as intermediate rights which can have various functions performed
relative thereto. (Ans. 5-6).
We agree with the Examiner that these meta-rights are a form of
usage/user rights which may be manipulated for a “given digital work.”
We further find that the Gilliam does teach and fairly suggest an
interface to process these meta-rights. Since we find that meta-rights may be
manipulated and surrendered, we also find they may be for the “given digital
work.” Gilliam describes usage rights such as:

rights to offer, grant, obtain, transfer, delegate, track,
surrender, exchange, revoke, and the like, usage rights
to/from others. The meta-rights can include the rights to
modify the conditions associated with other rights. For
example, a meta-right can include the right to extend or
reduce the scope of a particular right. A meta-right also
can include a right to extend or reduce the validation
period of a right.

(Col. 7, ll. 2-9).
We further interpret Appellant’s broad arguments regarding the
“retraction mechanism” to be an attempt to read limitations from the
Specification into the claim. As we previously explained, since we are
unsure of what the bounds of the claimed “mechanism” are, we must look to
Appellant’s Specification. The Specification is drafted using the same broad
terminology with some exemplary embodiments and listing some sub-
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components of the mechanism. Yet, we find no correlation of the “retraction
mechanism” itself. When asked at the oral hearing if Appellant was
attempting to invoke “means plus function” treatment, Appellant’s
representative indicated that they were not attempting to invoke “means plus
function” treatment.
JUDGE HUGHES: The entire limitation is functional language trying
to describe and distinguish what you're calling apparatus in your
preamble. So, explain to me how it is that that functional language in
any way limits an apparatus. I think there's a great deal of well-
decided case law out there that says that you cannot distinguish an
apparatus based on it's function, isn't that correct?
MR. MIELE: I don't think that's the law. The only issue I think
you'd be raising, and I would -- my position is that there's structure
within that clause, that 112, 6 paragraph would not apply, but it
sounds like you're raising the issue that 112, 6 paragraph might imply
(Oral Transcript p. 6)

Therefore, we give Appellant’s claim language a broad, but
reasonable interpretation in light of the Specification. In light of this broad
interpretation, we find that Gilliam teaches and suggests an interface to
perform the recited function. We find that Gilliam teaches meta-rights
which are “given associated usage rights to the given digital work.”
At the oral hearing, Appellant’s representative argued that the meta-
rights were more like “administrative rights” than “usage rights” and that
they were not associated with a given work.

JUDGE DIXON: Well, didn't the Examiner rely upon in
column 6 the Meta rights, some other usage rights, manner of
use rights?
MR. MIELE: Interestingly, the Meta rights allow someone to
modify someone's ability to -- like -- it's almost like administrative
rights. I can give someone administrative rights. So, whatever you're
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normally able to do to a work, now I can give you that right and I can
remove that right. So, if you have the right to set up usage rights for a
work, I could give you that right or remove that right.
JUDGE DIXON: But at the top of column 7 it uses words like
usage rights to -- usage rights such as rights to offer, grant, obtain,
transfer, delegate, track, surrender, exchange, revoke, the like.
MR. MIELE: Right. You know --
JUDGE DIXON: You mean surrender.
MR. MIELE: I don't think that --
JUDGE DIXON: That's not like retract?
MR. MIELE: Well, surrender -- you could --
JUDGE DIXON: You mean you're getting in the --
MR. MIELE: Well no, and I think --
JUDGE DIXON: Sounds like it.
MR. MIELE: I think that out of context this can take you off
target. I don't think it teaches retraction as specifically recited,
because a retraction that were talking about in the claims is retraction
of rights that have already been associated with the work. Remember,
Stefik's teaches that once you've associated the rights they're fixed.
You don't change them. I think that Gilliam teaches the same thing.
Once you associated the right with the work, you don't change them
once you do that.
JUDGE DIXON: But later in Gilliam, in column 11, they talk
about enforceable -- at column 11, line 19, they talk about an
enforceable property. They're talking about stocks and bonds, right to
sell, buy, sell?
MR. MIELE: Um-hum.
(Oral Transcript 3-4)

We find Appellant’s proffered distinction unavailing to the instant
claimed apparatus since we find that the labels placed on the abstract usage
“rights” do not change the operation or function of the apparatus.
While we have appreciated Appellant’s arguments concerning
whether the rights to “given digital work” have attached, we find that this
argument is also a legal abstraction which varies with the scope and content
of the specific rights and laws which may apply. We find these laws also to
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be abstractions which do not change the operation or function of the
apparatus. In the instant claims, we find no context set forth therein and
therefore the limitation provides little to distinguish the apparatus.
Therefore, Appellant’s repeated reliance thereon is unpersuasive of error in
the Examiner’s showing of obviousness.
With respect to Appellant's arguments in the Reply Brief, these
arguments generally address the individual teachings of both Stefik and
Gilliam in a vacuum. Appellant argues at page 10 of the Reply Brief "even
if one were to assume for argument's sake that Gilliam et al. taught a
retraction of the given associated usage rights, Gilliam et al. teach no request
for such a retraction." We find Appellant's argument to be unreasonable
wherein if you were to assume that Gilliam were to teach a retraction of a
given associated usage right then there would necessarily have to be some
means to request the retraction thereof and/or set up the retraction thereof
depending on the specific "rights" which were at issue.
From a review of the broad teachings of Gilliam, we find ample
suggestions for the presence of an interface or "mechanism" to request a
manipulation or "retraction" of a usage right. We further find that
manipulation or change of a right may be deemed similar to a commercial
transaction of a bundle of goods wherein if you change a single good in the
bundle of goods, then you have changed the contents of the entire bundle of
goods. When you deal with abstractions, it is all about how you look at the
abstractions and package the abstractions.
Appellant spends pages 10-13 of the Reply Brief addressing how
Appellant has amended the claim language throughout the prosecution and
the Examiner has modified the rejection and changed positions during
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prosecution, and that the Examiner has relied upon hindsight, but Appellant
does not respond to the Examiner's most recent clarification of the rejection
and reliance upon the meta-rights in Gilliam. Therefore, Appellant's
arguments are not persuasive of the error in the Examiner's showing of
obviousness
With respect to independent claim 1, we agree with the Examiner's
application of the combination of Stefik and Gilliam to the claimed
apparatus.

Claims 14-21
With respect to independent claim 14, Appellant makes the same
contentions as noted above. Appellant contends that the Examiner has not
shown in Gilliam that the license formation process involves revocation of
rights and there is no “request" for such a revocation. (App. Br. 27).
With respect to independent claims 14 and 18, the Examiner has
modified his rejection to essentially parallel that set forth with respect to
independent 1 with additional support as set forth on pages 17-19 of the
Answer and responsive arguments at pages 44-51. The Examiner again
relies upon the meta-rights.
In the Reply Brief, Appellant relies upon the arguments advanced
with respect to independent claim 1 to support independent claims 14 and
18. (Reply Br. 13). Again, we find Appellant's arguments unpersuasive of
error in the Examiner's showing of obviousness.
Therefore, we sustain the rejection of independent claim 14 and its
dependent claims 15-17.
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With respect to independent claim 18, the claim recites the same
method steps embodied on a machine-readable medium. Therefore, we
sustain the rejection of independent claim 18 and its dependent claims 19-
20.

Dependent claims
With respect to "Dependent Claims-for example, Claim 4", Appellant
argues that "[i]t is incumbent upon the examiner [to] take each dependent
claim seriously." (Reply Br. 13). We find the Examiner has addressed the
claims in the Answer. Specifically, claim 4 was addressed at page 9 and in
the responsive arguments at pages 35-37. Appellant has not responded to
that argument. From our cursory review of dependent claim 4, "the request"
may refer to "an access request" in claim 2 which is expressly recited or it
may refer to the implied "request" from the "retraction request mechanism
operable to request" (so a request is not necessarily present) and therefore
there is no support for Appellant's argument in the claim language.
Hence, when Appellant presents arguments to "take each dependent
claim seriously," then that is what Appellant should do to. Appellant
presented arguments which were based mainly upon language which was not
commensurate in scope of the claims in the Brief and then attempted to
remedy that in the Reply Brief which it too late to get the Examiner’s
informed response thereto. Leaving the Board to speculate in its review.
We find no substantive arguments for patentability and therefore find
no error in the Examiner's finding of obviousness.
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VI. CONCLUSION
For the aforementioned reasons, the Appellant has not shown error in
the Examiner’s showing of obviousness.

VII. ORDER
We affirm the Examiner’s obviousness rejections of claims 1-20.

AFFIRMED

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