Ex Parte Stefik et al

Board of Patent Appeals and Interferences

Jun 13, 2012

11174654 (B.P.A.I. Jun. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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7
Ex parte MARK J. STEFIK and PETER L. T. PIROLLI 8
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Appeal 2011-007608 11
Application 11/174,654 12
Technology Center 3600 13
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 17
MICHAEL W. KIM, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
DECISION ON APPEAL
20
Appeal No. 2011-007608
Application No. 11/174,654

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STATEMENT OF CASE 1
2
Mark J. Stefik and Peter L. T. Pirolli (Appellants) seek review under 3
35 U.S.C. § 134 (2002) of a final rejection of claims 80-97, the only claims 4
pending in the application on appeal. We have jurisdiction over the appeal 5
pursuant to 35 U.S.C. § 6(b) (2002). 6
The Appellants invented a form of distribution and usage rights 7
enforcement for digitally encoded works by the use of a grammar for 8
creating usage rights (Specification para. [0002]). 9
An understanding of the invention can be derived from a reading of 10
exemplary claim 80, which is reproduced below [bracketed matter and some 11
paragraphing added]. 12
80. A repository device for controlling the 13
use of a digital work in accordance with usage 14
rights associated with the digital work, said 15
repository device comprising: 16
[1] means for storing a description file 17
associated with a content file of said digital work, 18
said description file including the usage rights, the 19
usage rights specifying a manner of use by which 20
the digital work may be used; 21
[2] means for coupling said repository 22
device to a rendering repository, the rendering 23
repository 24
being a device separate from the repository device 25
and including means for initiating requests for 26
access to digital works; 27
[3] means for establishing secure and trusted 28
communication with the rendering repository 29
through said means for coupling; 30
[4] means for receiving a request from the 31
rendering repository for rendering the digital work, 32
the request including a manner of use of the digital 33
work; and 34
Appeal No. 2011-007608
Application No. 11/174,654

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[5] means for processing requests for access 1
to digital works, including means for enforcing the 2
usage rights by granting or rejecting the request 3
from the rendering repository in accordance with 4
the usage rights, wherein granting the request is 5
subject to the rendering repository being 6
determined as an authorized repository and 7
subject to the rendering repository being 8
determined as an authorized repository and 9
wherein processing requests comprises performing 10
closing transaction steps after the rendering 11
repository renders the digital work. 12
The Examiner relies upon the following prior art: 13
Bain US 5,287,434 Feb. 15, 1994
Hunter US 5,375,206 Dec. 20, 1994
Kahn US 6,135,646 Oct. 24, 2000

Claims 80-92, 94 and 96 stand rejected under 35 U.S.C. § 103(a) as 14
unpatentable over Kahn and Hunter. 15
Claims 93, 95 and 97 stand rejected under 35 U.S.C. § 103(a) as 16
unpatentable over Kahn, Hunter and Bain. 17
ISSUES 18
The issues of obviousness turn primarily on whether the scope of the 19
claims encompass requiring certain manners of actually rendering digital 20
objects. 21
FACTS PERTINENT TO THE ISSUES 22
The following enumerated Findings of Fact (FF) are believed to be 23
supported by a preponderance of the evidence. 24
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Application No. 11/174,654

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Facts Related to the Prior Art 1
Kahn 2
1. Kahn is directed to managing digital objects in a network, the 3
objects are stored at locations accessible in the network using a 4
storage technique which renders the digital objects secure against 5
unauthorized access. Pointer information which associates each 6
digital object identifier with a pointer indicating the location of the 7
stored digital object is also stored in the network. For each digital 8
object, validation information is stored separately from the digital 9
object, and is sufficient to permit a determination whether a purported 10
instance of a digital object is identical to the original. An authorized 11
user may have access to the validation information, using the digital 12
object identifier, to determine whether a purported instance of a 13
digital object is identical to the original. The validation information 14
comprises a digital signature over the digital object. Kahn 2:18-32. 15
2. The reference information is stored for each of the digital 16
objects. Validation information is also stored and is substantially 17
smaller in size than the corresponding digital object. An authorized 18
user may have access to the reference information using the unique 19
identifier. The reference information includes information concerning 20
registration of rights in the digital object including performance of the 21
object; accesses to and uses of digital objects; the terms and 22
conditions for use of digital objects; the ownership and transfer of 23
rights to disseminate digital objects; links between different digital 24
objects. Kahn 2:33-46. 25
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3. Verification information is stored separately from the digital 1
object. The pointer to the object (versus identifier information for the 2
object) is stored in multiple servers on the network. The identifiers 3
are generated in a manner to distribute the pointer information with 4
the unique identifier information relatively evenly among the servers. 5
Kahn 2:47-55. 6
Holders of rights in digital objects control terms and conditions 7
under which they are accessed or performed by users in a network. 8
Information is stored about terms and conditions for access to and 9
performance of each digital object. The information is made available 10
to a user in connection with a request for access to a digital object. 11
The user is enabled to indicate assent to the terms and conditions. 12
Access is permitted to the user only upon the user indicating assent to 13
the terms and conditions. Kahn 3:4-13. 14
4. Holders of rights in digital objects control terms and conditions 15
under which rights in the digital objects may be granted to others. 16
Terms and conditions for the granting of rights is stored in the 17
network. The terms and conditions are made available to potential 18
rights holders upon request via the network. The potential rights 19
holder and the current rights holder interact via the network to reach 20
agreement on terms and conditions for grant of dissemination rights. 21
Information identifying grants of such rights for digital objects on the 22
network are stored in a recordation server on the network. This will 23
generally be part of the reference service. Kahn 3:14-26. 24
5. A record of information concerning digital objects is stored on 25
a network. The digital objects are stored on the network in a manner 26
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that restricts unauthorized access to and transactions associated with 1
the digital objects. A reference service is provided on the network, 2
separate from the storage of the digital objects, for recording 3
information about accesses to and transactions associated with the 4
digital objects. Information about accesses to and transactions 5
associated with the digital objects is recorded in the reference service. 6
Access to the records of the reference service is permitted to 7
authorized users. Kahn 3:27-39. 8
6. A "repository" is a digital storage system into which digital 9
objects may be placed and retained for possible subsequent retrieval. 10
The repository may contain other related information as well as 11
management systems. Where appropriate, such information may be 12
provided to an "information and reference server". The result of 13
retrieving a digital object from a repository may be a performance of 14
the digital object (e.g., execution of a program) or the digital object 15
itself (e.g., the program). This is important in the case of digital 16
objects which are only intended to be performed by users (e.g., a 17
video game) rather than making the object itself available. A 18
performance of a digital object may be stored as a new digital object 19
and there may be separate terms and conditions associated with it. 20
Kahn 5:61 – 6:7. 21
Hunter 22
7. Hunter is directed to a system that provides a common 23
application program interface to a variety of license servers. The 24
system provides a single set of program calls and translates this single 25
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set of calls into a different set of calls for each license server. Hunter 1
2:32-37. 2
8. One of the requirements of most license servers is that the 3
application program sends a license renewal message to the license 4
server periodically to notify the server that the license is still in use. If 5
the application program fails to send the message, the license server 6
times it out and releases the license to another user. Hunter runs as a 7
separate process within the operating system environment to monitor 8
the application program, and as long as the application program 9
continues to provide services to the user, the system of the present 10
invention sends the periodic license renewal messages to the license 11
server. This relieves the application program of the task of providing 12
the periodic messages, thus the application program need only provide 13
initialization calls, which considerably simplifies the application 14
program. Hunter 2:41-56. 15
ANALYSIS 16
Initially we find that although many of the limitations in the 17
contested claims are expressed as means plus function, Appellants 18
argue only the function and do not argue the art relative to a 19
construction under 35 U.S.C. § 112, sixth paragraph. Thus, we regard 20
such arguments as waived. 21
We are not persuaded by the Appellants’ argument that there is no 22
reason to combine the references and that Kahn fails to disclose or 23
suggest any technical control on the rendering or enforcement of 24
usage rights, because there is no enforcement of those rights after the 25
user obtains the document. Appeal Br. 7-15. The Examiner fully 26
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responded to Appellants’ arguments at Answer 4-13, and we adopt the 1
Examiner’s findings and analysis from those pages and reach similar 2
conclusions. Thus the issues remaining are those argued in the Reply 3
Brief. 4
We are not persuaded by the Appellants’ argument that 5
Kahn fails to disclose or suggest "receiving, by the 6
repository device, a request from the rendering 7
repository for rendering the digital work," 8
"enforcing the usage rights by granting or rejecting 9
the request from the rendering repository in 10
accordance with the usage rights," and "performing 11
closing transaction steps after the rendering 12
repository renders the digital work" as recited in 13
the claims 14
15
Reply Br. 2. Kahn clearly describes receiving a request for a digital 16
work and enforcing the usage rights by granting or denying access. This is 17
uncontested. It is the nature of the request and of the enforcement that is 18
contested. As Kahn describes running the retrieved program, the request is 19
clearly for rendering the program. Appellants’ appear to be arguing the 20
manner in which such rendering occurs, but the claim only calls for making 21
the request. Indeed the limitation “for rendering the digital work” is merely 22
aspirational and the limitation “processing requests for access to digital 23
works” refers only to access, and not to actual rendering. 24
As to the closing transaction, the Examiner found that Hunter 25
evidenced that licenses such as those described by Kahn may often be 26
temporary, requiring renewal, and that Hunter provided a closing transaction 27
that would fill that need, and for that reason, one of ordinary skill would 28
have been motivated to apply Hunter’s remedy to Kahn in those situations. 29
Appeal No. 2011-007608
Application No. 11/174,654

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CONCLUSIONS OF LAW 1
The rejection of claims 80-92, 94 and 96 under 35 U.S.C. § 103(a) as 2
unpatentable over Kahn and Hunter is proper. 3
The rejection of claims 93, 95 and 97 under 35 U.S.C. § 103(a) as 4
unpatentable over Kahn, Hunter and Bain is proper. 5
6
DECISION 7
The rejection of claims 80-97 is affirmed. 8
No time period for taking any subsequent action in connection with 9
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 10
§ 1.136(a)(1)(iv) (2007). 11
12
AFFIRMED 13
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Klh 15