Ex Parte Schnell et al

Patent Trial and Appeal Board

Mar 13, 2017

11734694 (P.T.A.B. Mar. 13, 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.
11/734,694 04/12/2007 Patrik Schnell MS1-3371US 1520
22801 7590 03/15/2017
LEE & HAYES, PLLC
601 W. RIVERSIDE AVENUE
SUITE 1400
SPOKANE, WA 99201
EXAMINER
HALE, TIM B
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/15/2017 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):
lhptoms @ leehay es .com
u sdocket @ micro soft .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PATRIK SCHNELL, CLIFFORD P. STROM, ADRIAN J. ONEY,
MARK L. BEAUBIEN, KEDAMATH A. DUBHASHI,
ALEXANDRE V. GRIGOROVITCH, ANAND PAKA, and
SATVIR RANDHAWA
Appeal 2014-0099591
Application 11/734,6942
Technology Center 3600
Before MURRIEL E. CRAWFORD, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 14, 16—19, and 23—28. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
Apr. 8, 2014) and Reply Brief (“Reply Br.,” filed Sept. 15, 2014), and the
Examiner’s Answer (“Ans.,” mailed July 15, 2014) and Final Office Action
(“Final Act.,” mailed June 27, 2013).
2 Appellants identify Microsoft Corporation as the real party in interest.
App. Br. 4.
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Application 11/734,694
CLAIMED INVENTION
Appellants’ claimed invention relates to “technologies that manage
access to and usage of digital content such as songs and movies,” i.e., Digital
Rights Management (“DRM”). Spec. 11.
Claim 14, reproduced below, is the sole independent claim on appeal,
and is representative of the claimed subject matter:
14. A method comprising:
establishing a domain including devices of a specific make
and model;
obtaining a preview license to control access to digital
content by the devices included in the domain, the preview
license being obtained to control consumption of the digital
content by the devices included in the domain;
binding the preview license to the domain based at least in
part on identifying the domain in the preview license;
identifying a first member device for inclusion in the
domain;
sending to the first member device of the domain, a
package containing the digital content and the preview license
associated with the digital content; and
enabling communicating, by the first member device, the
package containing the digital content and the preview license to
a second member device of the domain to allow the second
member device to consume the digital content according to the
preview license based at least on:
the preview license being bound to the domain; and
the second member device being a member of the
domain.
REJECTIONS
Claims 14, 17, 25, 27, and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Son (US 2006/0206708 Al, pub. Sept. 14, 2006),
Boomershine (US 2007/0016531 Al, pub. Jan. 18, 2007), Kawaguchi (US
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Application 11/734,694
2007/0079380 Al, pub. Apr. 5, 2007), and Kitazato (US 2006/0212943 Al,
pub. Sept. 21, 2006).3
Claims 16, 18, 19, 24, and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Son, Boomershine, Kawaguchi, Kitazato, and Stefik
(US 2006/0190404 Al, pub. Aug. 24, 2006).
Claim 23 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Son, Boomershine, Kawaguchi, Kitazato, and Sasaki (US 6,735,699 Bl, iss.
May 11,2004).
ANALYSIS
Independent Claim 14, and Dependent Claims 17, 25, 27, and 28
We are persuaded that the Examiner fails to establish a prima facie
case of obviousness. In rejecting claim 14 under 35 U.S.C. § 103(a), the
Examiner relies on a combination of Boomershine and Kitazato as
disclosing or suggesting “binding the preview license to the domain based at
least in part on identifying the domain in the preview license,” as recited in
claim 14. Final Act. 6—7. Specifically, the Examiner cites Boomershine as
disclosing “binding the [preview] license to a domain.” Id. at 6 (citing
Boomershine 2, 14, 15, 19, 22); see also Ans. 6—7 (citing Boomershine
^Hf 14, 23). The Examiner finds that “[njeither Son, nor Boomershine, nor
Kawaguchi teach, but Kitazato teaches: ‘based at least in part on identifying
the domain in the preview license.’” Final Act. 7 (citing Kitazato 82,
3 We treat as inadvertent error the Examiner’s identification of claim 23
among the rejected claims (see Final Act. 5), given its treatment at pages 9—
10 of the Final Office Action.
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Application 11/734,694
158—59, 165 [sic]) (emphasis omitted); see also Ans. 7 (citing Kitazato
11 145-147).
However, in the Final Answer, the Examiner offers no articulated
rationale explaining why or how Boomershine and Kitazato would be
combined by one of ordinary skill in the art to arrive at the argued limitation.
See Final Act. 7. In the Answer, the Examiner reasons:
As Kitazato also teaches controlling access to content using
preview licenses, it would have been obvious to combine
Kitazato with Kawaguchi, Son and Boomershine by substituting
the means for controlling access (preview license of Kitazato) to
content with the another means for controlling access (the rights
object of Son, the license Boomershine, the preview license of
Kitazato [sic]).
Id. at 7. But we fail to see, and the Examiner does not adequately explain,
how controlling access to content using a preview license, as described by
Kitazato, in view of the various means for controlling access, as described
by Son, Boomershine, and Kawaguchi, describes or suggests “binding the
preview license to the domain based at least in part on identifying the
domain in the preview license,” as recited in claim 14. The Examiner
further does not explain how Kitazato’s “means for controlling access” of
previewing the license is equivalent to the “means for controlling access” of
Son’s rights object and Boomershine’s license such that it would have been
obvious to substitute one for the other. See KSR Int 7. Co. v. Teleflex Inc.,
550 U.S. 398,416-17 (2007).
Moreover, we fail to see anything in any of the cited portions of
Kitazato adequately supporting the Examiner’s finding that Kitazato
describes identifying the domain from the preview license. For example,
paragraph 82 of Kitazato identifies elements in a sublicense file for content,
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Application 11/734,694
such as a license ID and content ID. See also Kitazato Fig. 5. Paragraphs
158 and 159 describe that the operations of Kitazato’s content delivery
system can be effected by hardware or software, and the steps can be
performed in parallel or serially. And cited paragraph 165 does not exist.
We agree with Appellants that the portions of Kitazato relied on by the
Examiner in the Final Action do not describe identifying the domain in the
license. App. Br. 12—13.
In the Answer, the Examiner additionally cites paragraphs 145—147 of
Kitazato as describing identifying the domain from the preview license.
Ans. 7. Kitazato describes how a content reproduction unit searches and
extracts a preview sublicense, and sends the extracted preview sublicense to
the DRM client. Kitazato 1146. The DRM client stores the preview license
together with the corresponding, previously acquired PPV sublicense. Id.
Subsequently, the content reproduction unit informs the DRM client of the
domain ID for the preview sublicense. Id. 1147.
Stated another way, Kitazato describes that the content reproduction
unit sends the DRM client the domain ID for the preview sublicense after the
DRM client already has the preview license, not that the domain ID is
identified in the preview sublicense. Thus, the Examiner does not
adequately support finding that Kitazato describes identifying the domain in
the preview license.
In view of the foregoing, we do not sustain the Examiner’s rejection
under 35 U.S.C. § 103(a) of independent claim 14. We also do not sustain
the Examiner’s rejection of claims 17, 25, 27, and 28, which depend
therefrom.
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Application 11/734,694
Dependent Claims 16, 18, 19, 23, 24, and 26
Claims 16, 18, 19, 23, 24, and 26 each depend from claim 14. The
Examiner’s rejections of these dependent claims do not cure the deficiency
in the Examiner’s rejection of independent claim 14. Therefore, we do not
sustain the Examiner’s rejections under 35 U.S.C. § 103(a) of claims 16, 18,
19, 23, 24, and 26 and for the same reasons described with respect to claim
14.
DECISION
The Examiner’s rejections of claims 14, 16—19, and 23—28 under 35
U.S.C. § 103(a) are reversed.
REVERSED
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