Ex Parte Spurgat et al

Board of Patent Appeals and Interferences

Aug 30, 2012

09833173 (B.P.A.I. Aug. 30, 2012)

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.
09/833,173 04/11/2001 Jeffrey Jonathan Spurgat 10587.0056-00000 1523
100692 7590 08/30/2012
AOL Inc./Finnegan
901 New York Ave., NW
Washington, DC 20001
EXAMINER
CHOUDHURY, AZIZUL Q
ART UNIT PAPER NUMBER
2453
MAIL DATE DELIVERY MODE
08/30/2012 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 JEFFREY JONATHAN SPURGAT,
STEPHEN CHRISTOPHER GLADWIN, DEPENG BI,
and TROY STEVEN DENKINGER
________________

Appeal 2012-002622
Application 09/833,173
Technology Center 2400
________________

Before THOMAS S. HAHN, JEFFREY S. SMITH, and
ANDREW CALDWELL, Administrative Patent Judges.

CALDWELL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-002622
Application 09/833,173

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SUMMARY
Appellants appeal under 35 U.S.C. §§ 6(b) and 134 from the
Examiner’s rejection of claims 10-26. We have jurisdiction under 35 U.S.C.
§ 6(b).
Claims 10-26 stand rejected under 35 U.S.C. § 103(a) as obvious over
Jones (US 6,697,944 B1; Feb. 24, 2004; filed Oct. 1, 1999) in view of Levy
(US 7,055,034 B1; May 30, 2006; filed Sep. 23, 1999).
We affirm.

STATEMENT OF CASE
Appellants describe the present invention as directed to maintaining
copy protection and security of digital audio and video data throughout the
playback process, including the conversion to analog format, through the use
of an audio or video decrypting and decoding peripheral that is attached to a
computing platform. Spec. ¶ 0018.
Independent claim 10 is representative1 and is shown below with key
disputed limitations emphasized.
10. A system for maintaining protection of digital content distributed for
playback, the system comprising:
a computing platform, executing a playback application, configured
to:

1 Although Appellants nominally argue independent claims 16, 21, and 26
separately from claim 10 (App. Br. 15-16), the arguments presented for
claims 16, 21, and 26 are substantially the same as those for claim 10. As
for all of the dependent claims, Appellants do not present any arguments
beyond those presented regarding claim 10. Accordingly, we treat claims
10-26 as a single claim grouping, and select claim 10 as representative of
this group. See 37 C.F.R. § 41.37(c)(1)(vii).
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Application 09/833,173

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receive a playback command from a user to playback the digital
content;
select a server located on the Internet as a source of the digital
content;
receive encrypted digital content from the server; and
forward the encrypted digital content, without decrypting, to a
communication link;
a peripheral device coupled to the communication link and configured
to:
receive the encrypted digital content from the computing
platform;
decrypt the encrypted digital content into decrypted digital
content; and
convert the decrypted digital content to analog content for
playback.

EXAMINER’S FINDINGS AND APPELLANTS’ ARGUMENTS2
The Examiner concludes that the combination of Jones and Levy
teaches a system as in independent claim 10. Ans. 5-7, 11-13.
Appellants argue that Jones and Levy do not teach a computing
platform configured to receive a playback command from a user to playback
the digital content. App. Br. 13. Appellants argue that the Examiner has
failed to establish a prima facie rejection based on the combination of Jones
and Levy since the Examiner’s modification is not supported by the
references. App. Br. 13-15. Appellants finally argue that the combination

2 Rather than repeat the Examiner’s positions and Appellants’ arguments in
their entirety, we refer to the following documents for their respective
details: the Appeal Brief (App. Br.) filed June 7, 2011; the Examiner’s
Answer (Ans.) mailed September 2, 2011; and the Reply Brief (Reply Br.)
filed November 2, 2011.
Appeal 2012-002622
Application 09/833,173

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of Jones and Levy does not teach a playback application configured to
perform all four functions of the computing platform of claim 10. Reply Br.
1-2.

ISSUES
Do Jones and Levy teach a computing platform configured to receive
a playback command from a user to playback the digital content?
Has the Examiner articulated a rationale supported by articulated
reasoning with some rational underpinning to justify the Examiner’s
obviousness conclusion?
Do Jones and Levy teach a playback application configured to
perform all four functions of the computing platform of claim 10?

ANALYSIS
As to whether Jones and Levy teach “a computing platform . . .
configured to receive a playback command from a user to playback the
digital content,” we are not persuaded that Appellants have identified error
in the rejection. Appellants contend that Jones merely teaches a user
downloading selected content from a server and therefore does not teach or
suggest a playback command as claimed. See App. Br. 13 (discussing Jones
col. 8, ll. 40-55). The Examiner, however, finds that Jones teaches that
playback can be effectuated using the user’s personal computer. Ans. 11
(citing Jones col. 8, ll. 62-65). Given this evidence that content can be
played back on the user’s personal computer, we agree with the Examiner’s
conclusion that Jones teaches a playback command as claimed.
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Application 09/833,173

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Appellants contend that the Examiner’s modification is not supported
by the references nor would the modification have been obvious to one of
ordinary skill in the art. App. Br. 14. Appellants also contend that Levy’s
teaching of a portable MP3 player with a direct Internet connection would
suggest eliminating the personal computer of Jones. App. Br. 15.
The Examiner relies upon the three-tier system of Jones’s Figure 2 in
which a portable Motion Picture Experts Group Audio Level 3 (MP3) player
is connected to a personal computer which, in turn, is connected via the
Internet to a digital content provider server. See Ans. 5-6 (relying upon the
description of Jones’s Figure 2). The Examiner relies upon Levy to teach a
system in which encrypted content is delivered to a portable MP3 player and
to also teach that a portable MP3 player and a PC-based player do not
necessarily share the same encryption/decryption key. Id. at 6, 12-13. The
Examiner concludes that it would be obvious to one of ordinary skill in the
art at the time the invention was made to modify the system of Jones to have
the personal computer act as an intermediary in order to allow a portable
MP3 player, which lacks a direct Internet connection and does not share a
key with a PC-based player, to communicate with a content distribution
server in order to download content. The Examiner’s reasoning is based
upon (1) the teaching of Jones regarding the three-tier system in which a
portable MP3 player cannot be directly connected to the Internet and (2) the
teaching of Levy that an MP3 player and a PC-based player do not
necessarily share the same encryption key. Since the Examiner’s rationale is
based upon teachings of the combination of references and what those
teachings would suggest to one of ordinary skill, we are not persuaded that
Appellants have identified error in the rejection.
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Application 09/833,173

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As to Appellants’ contention that Levy’s teaching of a portable MP3
player with a direct Internet connection would suggest eliminating the
personal computer of Jones in order to have the portable MP3 player directly
connect to the Internet, we are not persuaded that Appellants have identified
error in the rejection. Appellants are essentially arguing that someone of
ordinary skill in the art would eliminate the personal computer of Jones that
allows legacy portable MP3 players (i.e., those without network interfaces)
to get new content. We are not persuaded that a person of ordinary skill in
the art would ignore the benefits of continuing to have a personal computer
act as an intermediary for legacy portable MP3 players that were designed
without a network interface.
As to whether Jones and Levy teach a playback application configured
to perform all four functions of the computing platform of claim 10, we are
not persuaded that Appellants have identified error in the rejection.
Appellants first argued this issue in the Reply Brief, and there is no
persuasive reason provided as to why the argument could not have been
raised earlier. Appellants’ argument is therefore waived as untimely. See
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative)
(“[T]he reply brief [is not] an opportunity to make arguments that could
have been made in the principal brief on appeal to rebut the Examiner’s
rejections, but were not.”). Even if this argument had been timely raised, we
are not persuaded that Appellants have identified error in the rejection.
Appellants’ claim interpretation is consistent with their earlier statement
discussing claim 10 which stated that it is the computing platform, as
opposed to the playback application, performing these functions. See App.
Br. 13.
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Application 09/833,173

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For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner’s obviousness rejection of representative claim 10.
Accordingly, we will also sustain the Examiner’s rejection of claims 11-26,
which were not argued separately.

CONCLUSION
Appellants have not shown that the Examiner erred in rejecting claims
10-26 under 35 U.S.C. § 103.

DECISION
The Examiner’s decision rejecting claims 10-26 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2010).

AFFIRMED

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