Ex Parte Messerges et al

Patent Trial and Appeal Board

Jul 24, 2017

13330565 (P.T.A.B. Jul. 24, 2017)

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.
13/330,565 12/19/2011 Thomas Messerges GOGL-1330-B 7290
7590 07/26/201797818
Google Inc.
Young Basile Hanlon & MacFarlane P.C.
3001 West Big Beaver Road
Suite 624
Troy, MI 48084-3107
EXAMINER
VIG, NARESH
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
07/26/2017 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):
docketing @ youngbasile. com
audit @ youngbasile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS MESSERGES and EZZAT A. DABBISH
Appeal 2015-003214
Application 13/330,565
Technology Center 3600
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Thomas Messerges and Ezzat A. Dabbish (Appellants) seek review
under 35 U.S.C. § 134 of the Final Rejection of claims 1—20, the only claims
pending in the application on appeal. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
The Appellants invented a form of digital-rights management.
Specification 1:11—13.
1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed August 25, 2014) and the Examiner’s Answer (“Ans.,” mailed October
20, 2014), and Final Action (“Final Act.,” mailed February 27, 2014).
Appeal 2015-003214
Application 13/330,565
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method
for initiating an authorization attempt of an action
to be performed by a device
on a prestored digital item,
the method comprising:
[1] predefining a first group of actions
including a subset of actions that can be performed by the
device on the prestored digital item;
[2] determining the action to be performed by the device on the
prestored digital item;
[3] initiating an internal authorization attempt by the device
if the action is from the predefined first group of actions,
wherein the internal authorization attempt is not initiated
if the action is not from the first group of actions;
and
[4] initiating an external authorization attempt accessing an
enabling server if the action is not from the first group of
actions.
The Examiner relies upon the following prior art:
Mohammed US 7,065,507 B2 Jun. 20, 2006
David Her, “DRM: The Guardian and Protector of Digital Media”, The
Two Faces of iP Video, CED Magazine, April 2002, 32 pages.
Claims 1—20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Her and Mohammed.
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Appeal 2015-003214
Application 13/330,565
ISSUES
The issues of obviousness turn primarily on whether the references
describes predefining a first group of actions that are then acted upon as
recited in the claims.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Mohammed
01. Mohammed is directed to an architecture for enforcing rights in
digital content. Mohammed 1:20—21.
02. Mohammed describes an enforcement architecture that allows
access to encrypted digital content only in accordance with
parameters specified by license rights acquired by a user of the
digital content. Mohammed further describes supervision of
license acquisition by a rendering application. Mohammed 1:21—
27.
03. Mohammed describes, with respect to Figure 5B, and assuming,
now, that the license evaluator 36 has found at least one valid
license 16 and that at least one of such valid licenses 16 provides
the user with the rights necessary to render the corresponding
digital content 12 in the manner sought (i.e., is enabling), the
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Appeal 2015-003214
Application 13/330,565
license evaluator 36 then selects one of such licenses 16 for
further use (step 519). Mohammed 24:11—22.
04. Mohammed describes, with respect to Figure 14A, the
rendering application 34 detecting the protected and encrypted
nature of the content 12 (step 1401) upon attempting to render the
content 12, and therefore requesting the DRM system 32 to
authorize the rendering of the content 12 and decrypt the content
12 according to the content key. Mohammed 33:65—34:3.
Her
05. Her is directed to a high level overview of the state of digital
rights management (DRM). Her Title.
06. Her describes either directing a consumer to a registration page
or silently retrieving a key. Her 18:Col.2:50—3:4.
07. Her describes playing a file based on rules and rights in the
license. The license may specify plying attributes such as start
and expiration dates, duration, number of plays, number of
accesses, and rights to copy. Her 18:Col.3:8—18
08. Her describes conditional access with DRM. Herr 20:col. 1.
ANALYSIS
We are persuaded by Appellants’ argument that neither reference
describes predefining a first group of actions Br. 5—6. The Examiner
initially maps an attempt to render a file as such a group. Final Act. 4. In
responding to Appellants’ argument, Examiner cites Her 18, third column
that describes playing a file. Ans. 2. Playing a file is a single action. Her
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Appeal 2015-003214
Application 13/330,565
does not describe predefining a group of such actions. Although Her
describes including play action attributes in the license, such attributes are
not actions, and Her’s exemplary list is not itself a step of predefining such
actions in a device.
Each independent claim has a similar limitation as to such a predefined
group.
CONCLUSIONS OF LAW
The rejection of claims 1—20 under 35 U.S.C. § 103(a) as unpatentable
over CED and Mohammed is improper.
DECISION
The rejection of claims 1—20 is reversed.
REVERSED
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