Ex Parte Ristow et al

Patent Trial and Appeal Board

Oct 27, 2016

12461872 (P.T.A.B. Oct. 27, 2016)

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.
12/461,872 08/26/2009 Gerald Ristow AC-4041-69 6327
23117 7590 02/01/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
GEBRESENBET, DINKU W
ART UNIT PAPER NUMBER
2164
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERALD RISTOW and JOACHIM VOEGELE
Appeal 2015-007679
Application 12/461,872
Technology Center 2100
Before ALLEN R. MacDONALD, DEBRA K. STEPHENS, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal 2015-007679
Application 12/461,872
STATEMENT OF CASE
This is a decision on Appellants’ Request for Rehearing. Appellants’
Request for Rehearing is filed under 37 C.F.R. § 41.521 requesting that we
reconsider our Decision of October 31, 2016, wherein we affirmed the
Examiner’s rejection of claims 1—8, 10, 12—15, and 18—20. We have
reconsidered our Decision in light of Appellants’ comments in the request,
and have found no error in the result reached. We, therefore, decline to
change the result of the Decision.
Exemplary Claim
Exemplary independent claim 1 under appeal reads as follows:
1. A database system configured to provide read-only
access to data that is stored in a database, the database system
comprising:
a processing system that includes at least one computer
processor, the processing system configured to:
extract a subset of data from the database;
store, on a non-transitory storage medium, the
extracted subset of data in a read-only database;
store a time-stamp that is associated with the
extracted subset of data in the read-only database;
encrypt the data stored in the read-only database;
and
store an access application, on the non-transitory
storage medium, in accordance with the read-only
database, the access application including control logic
that is, in conjunction with at least one processor,
configured to:
1 “The request for rehearing must state with particularity the points believed
to have been misapprehended or overlooked by the Board.”
37 C.F.R. §41.52(a)(1).
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Application 12/461,872
provide exclusive access to data stored in
the read-only database to a user via the access
application, wherein the exclusive access provided
to the user is based on a license file that is stored in
accordance with the read-only database;
decrypt the encrypted data so as to provide
unencrypted data to the user via the provided
exclusive access; and
control an amount of data that is allowed to
be copied from the read-only database to an
external computing source for further processing
based the license file.
Appellants ’ Contentions
1. Appellants contend the Board erred in the Decision because
The portion of Pence used by the Decision to support its
affirmance was also never relied upon by the Examiner in the
Final Rejection or the Answer, and accordingly Applicant has
not had a chance to address this misunderstanding.
(Request 1.)
2. Appellants also contend:
Pence does mention that information contained in the
servers can be shared amongst the various servers. Those servers
include a “License Server” and “Content Server” mentioned in
paragraph 15 and a “Web Server” mentioned in the other part of
paragraph 16 not quoted by the decision [sic]. Given this
context, a person of ordinary skill in the art would clearly
understand that the Pence’s [sic] discussion of sharing “the
information contained on the servers... between the servers”
relates to sharing information amongst the License, Content, and
Web servers — not sharing that information with a license file.
(Request 2.)
3. Appellants also contend:
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Application 12/461,872
Furthermore, even if Pence arguably teaches that “the
License File (which is on the client) and the License Server
(stored on the servers) are used cooperatively to enforce” generic
licensing requirements as advanced by the Decision, there is no
teaching of controlling an amount of data that can be copied in
such a cooperative manner. Even if the License Server plays
some role in controlling the amount of data to be copied (a point
that Applicant continues to disagree on), there is still no teaching
in Pence that makes use of the License File for controlling an
amount of data that can be copied. Once the teachings of Pence
are properly considered (i.e., as viewed by a person of ordinary
skill in the art), it becomes immediately clear that Pence does not
provide any teachings for controlling the amount of data that can
be copied based on a license file.
(Request 2.)
ANALYSIS
First Contention
Although not explicitly asserting the Decision included a new ground
of rejection, Appellants’ first contention objects to the citation of Pence
paragraph 16 in the Decision because the Examiner cited paragraphs 3,11,
15, and 19, but did not specifically cite paragraph 16 in the Final Rejection
and Answer. To the extent Appellants are asserting our discussion of
paragraph 16 constitutes a new ground of rejection, we disagree.
“It is well-established that the Board is free to affirm an examiner’s
rejection so long as ‘appellants have had a fair opportunity to react to the
thrust of the rejection.’” In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
There is no new ground of rejection made when “explaining to appellants
why their arguments were ineffective to overcome the rejection made by the
examiner.” In reNoznick, 391 F.2d 946, 949 (CCPA 1968).
Paragraph 16 explains how functionality in the earlier cited
paragraphs, such as in paragraphs 3,11, and 15, is implemented in Pence’s
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Application 12/461,872
system. Our discussion of paragraph 16, therefore, served to provide further
explanation for why Appellants’ arguments were ineffective to overcome the
Examiner’s finding the collective capabilities of Pence’s License File and
License Server taught or suggested the recited “control” limitation.
Accordingly, to the extent, if any, Appellants’ request seeks designation of a
new ground of rejection based on our reference to Pence paragraph 16, we
do not grant the request.
Second Contention
We are unpersuaded by Appellants’ second contention that we
misapprehended or misunderstood what the disclosure of paragraph 16 of
Pence would teach a person of ordinary skill in the art at the time the
invention was made. Appellants argue when viewed in context, the sharing
described in paragraph 16 of Pence is limited to sharing information among
the License, Content, and Web servers, and not sharing information with a
license file. We disagree.
Paragraph 16 of Pence discloses “[rjegardless of how the servers are
interfaced and accessed, the information contained on the servers can be
shared between the servers and the Client to allow for the proper licensing
to be created and enforced.” Appellants argue this sentence means that
information is shared among the various servers in Pence’s system. In
offering its preferred interpretation, Appellants focus only on the phrase
“between the servers,” ignoring the phrase “and the Client” entirely. Had
Pence wished to convey that data is shared only among the various servers,
there would have been no reason to include the phrase “and the Client” in
paragraph 16. Accordingly, we are not persuaded we misunderstood
paragraph 16.
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Third Contention
We are also unpersuaded by Appellants’ third contention that “[e]ven
if the License Server plays some role in controlling the amount of data to be
copied (a point that Applicant continues to disagree on), there is no teaching
in Pence that makes use of the License File for controlling an amount of
data that can be copied.” Pence teaches enforcing licensing conditions.
Pence 11 (“This invention generally relates to . . . the licensing and
protection of electronic content files.”). As we explained above, Pence
teaches “proper licensing is created and enforced” because “the information
contained on the servers can be shared between the servers and the Client.'”
Pence 116 (emphasis added). The functionality on Pence’s client device
tasked with managing licensing requirements is the License File. Pence
111. Based on Pence’s teaching that proper licensing is created and
enforced by sharing information between the servers and the client, and
based on Pence’s teaching that the License File is tasked with managing
licensing requirements on the Client, a person of ordinary skill in the art
would have understood the enforcement of licensing requirements to be a
collaborative effort between the License Server and the License File.
Pence also teaches various types of licensing schemes, among them
one in which “keep[ing] a running total of the amount of content the user has
downloaded or streamed and compare it to the amount of content the user is
allowed according to his payment plan.” Pence 115. Pence also describes
the use of subscription management methods in which a user can download
up to a “maximum amount of content allowed.” Pence 13. A person of
ordinary skill in the art would have appreciated the most logical way to
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Application 12/461,872
enforce such a license would have entailed controlling the amount of data
copied so as not to exceed the maximum amount allowed under the license.
Thus, Pence teaches (1) the use of licenses which restrict the amount
of content allowed; (2) the most logical way to enforce this type of license is
by controlling the amount of data downloaded on the client; (3) the License
File and License Server work together to enforce licenses; and (4) because
the License File and License Server both participate in the enforcement of
licenses, the controlling of the amount of data downloaded is based at least
in part on the License File.
Summary
Appellants have not persuaded us we misapprehended the teachings of
Pence in the Decision. Nor have Appellants persuaded us that the Decision
changed the thrust of the rejection in such a way that it should have been
designated as a new ground.
DECISION
In view of the foregoing discussion, we grant Appellants’ Request for
Rehearing to the extent of reconsidering our decision, but we deny
Appellants’ request with respect to making any other change thereto.
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)(l)(iv).
REQUEST FOR REHEARING DENIED
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