Ex Parte Treffers et al

Patent Trial and Appeal Board

Mar 28, 2016

12176074 (P.T.A.B. Mar. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/176,074 07/18/2008 Menno Anne Treffers
24737 7590 03/30/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR, NY 10510
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
121176074 1835
EXAMINER
HEWITT II, CAL VIN L
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/30/2016 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):
debbie.henn@philips.com
marianne.fox@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MENNO ANNE TREFFERS and
ANTONIUS ADRIAAN MARIA STARING
Appeal2013-010280
Application 12/176,0741
Technology Center 3600
Before MURRIEL E. CRAWFORD, TARA L. HUTCHINGS, and
SHEILA F. McSHANE
Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision to reject claims 14--19, 23, and 24. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellants, the real party in interest is Philips Intellectual
Property Standards. Appeal Brief filed October 26, 2011, hereafter "App.
Br.," 2.
Appeal2013-010280
Application 12/176,074
BACKGROUND
The invention relates to controlling the distribution and use of digital
works. Specification, hereinafter "Spec.," 1, 11. 1-2. It is an object of the
invention to reduce vulnerability to a copy and restore attacks. Id. at 3, 11.
30-33.
Representative claim 14 is reproduced from page i of the Claims
Appendix of the Appeal Brief (Claims App'x) as follows, with emphasis
added to relevant claim limitations:
14. A process for using a record carrier with a drive for reading and
writing information on the record carrier to control distribution
and use of a digital work which is stored on said record carrier,
comprising the steps of:
(a) attaching usage right information, which defines one or
more user right conditions which must be satisfied in order to
permit a controlled distribution and/or use of the digital work,
to said digital work that is stored on the record carrier;
(b) reducing vulnerability to copy and restore attack by storing
certain of the usage right information in a hidden channel of
the record carrier;
( c) controlling the drive to refuse to permit a distribution and/ or
use of the digital right on the drive if the stored usage right
information, upon being read from the hidden channel by the
drive, indicates that a corresponding user right condition is not
satisfied; and
( d) using the drive to write updates of the stored usage right
information in the hidden channel on the record carrier with
every controlled distribution and/or use of the digital work by
the drive.
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Application 12/176,074
In a Final Rejection, the Examiner rejects claims 14--19, 23, and 24
under 35 U.S.C. § 101 2 as directed to nonstatutory subject matter, under
35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly
point out and distinctly claim the subject matter regarded as the invention,
and under 35 U.S.C. § 103(a) as unpatentable over Ginter3 and Kunita4.
Final Action mailed November 26, 2010, hereinafter "Final Act.," 3-9; see,
also, Answer mailed March 2, 2012, hereinafter "Ans.," 5-12.
DISCUSSION
35 U.S.C. § 101, nonstatutory subject matter
The Examiner finds that the claims recite an abstract idea with
insufficient recitation of a machine performing the steps of attaching,
controlling, or using. Ans. 5-6, 12-13 (citing Bilski v. Kappas, 130 S. Ct.
3218 (2010) ). The Appellants argue that the machine-or-transformation test
under Bilski is not the only test of statutory subject matter, but
notwithstanding, the claims meet this test because they integrally relate to a
record carrier or drive that is read from and written to. App. Br. 4--5.
We find that the Examiner has not demonstrated that the claims are
directed to nonstatutory subject matter. In concluding the claims are patent-
ineligible, the Examiner applies the machine-or-transformation test
established under Bilski. We apply the most recent standard for determining
subject matter eligibility, as established by the Supreme Court in Alice Corp.
2 The current application was filed July 18, 2008, prior to the effective date
of the AIA (America Invents Act), and the pre-AIA statute is applicable.
3 US Patent 5,892,900, issued April 6, 1999.
4 US Patent 4,926,388, issued May 15, 1990.
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Application 12/176,074
Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347 (2014). Under this standard, the
first step is to determine whether the claims are directed to a patent-
ineligible concept. Id. at 2355.
Here, the claims relate to reading or writing to a record carrier or drive
which, as physical entities performing tangible functions, are distinguishable
from the patent-ineligible subject matter, such as laws of nature, natural
phenomena, and abstract ideas, under the Alice test or even the previously
established machine-or-transformation standard of Bilski. As such, we
determine that the subject matter of the claims is patent eligible.
Therefore, we cannot sustain the rejection of claims 14--19, 23, and 24
under 35 U.S.C. § 101 as reciting nonstatutory subject matter.
35 U.S. C. § 112, second paragraph, indefiniteness
The Examiner withdrew the rejection of claims 14--19, 23, and 24
under 35 U.S.C. 112, second paragraph, as indefinite for reciting
"vulnerability," but maintained the rejection with respect to the use of the
term "certain," i.e., claims 14 and 23, step (b), "storing certain of the usage
right information." Ans. 13. The Examiner finds that "certain" is unclear.
Id. The Appellants argue that "certain of the usage right information" refers
to "some, or a portion, of the usage right information." App. Br. 6.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether "those skilled in the art would understand what is claimed when the
claim is read in light of the specification." Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). The Examiner has not established that a person of skill in the art
could not understand the claims as written. We determine that the term
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Application 12/176,074
"certain" is not ambiguous on its face, nor does it lead to ambiguity when
used in context, as it delineates a portion of the usage right information.
Accordingly, we cannot sustain the rejection of claims 14--19, 23, and
24 under 35 U.S.C. § 112, second paragraph.
35 U.S.C. § 103(a)
The Appellants address the obviousness rejection of independent
claim 14, with dependent claims 15 and 17-19 standing or falling with it.
App. Br. 6-9. The Appellants make additional arguments related to the
obviousness rejection of dependent claim 16, and argue separately
independent claim 23, with dependent claim 24 rising or falling with it. Id.
at 8-9. We will address the claims in a similar manner.
Claims 14, 15, and 17-19
The Examiner finds that Ginter does not teach a hidden channel and
relies on Kunita for the teaching of this limitation, with secret data stored on
a first memory area and nonsecret data on a second memory area. Ans. 8
(citing Kunita 1:15-20, 1:40-60, 2: 35---61, 6:35-68).
The Appellants argue that Kunita does not teach a hidden channel,
because the secret data it discloses is data that is merely password-protected
and would not combat a copy and restore attack, whereas the claimed hidden
channel can only be accessed by compliant devices. App. Br. 7-8; Reply
Brief, mailed May 2, 2012, hereinafter "Reply Br.," ii. The Appellants
additionally argue that neither Ginter nor Kunita contemplate reducing
vulnerability to a copy and restore attack, making their combination for that
purpose inappropriate. See App. Br. 7; Reply Br. ii.
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Application 12/176,074
Upon consideration of the evidence on this record in light of the
arguments advanced by the Appellants, we find that the Appellants have not
identified reversible error in the Examiner's determination that claim 14 is
obvious under 35 U.S.C. § 103(a). Accordingly, we sustain the Examiner's
rejection of this claim for the reasons set forth in the Final Action and the
Answer. We add the following primarily for emphasis.
The Appellants' arguments fail from the outset, as they are not based
on limitations appearing in the claims and therefore cannot be relied upon
forpatentability. In re Self, 671F.2d1344, 1348 (CCPA 1982). Although
the Appellants argue that Ginter and Kunita fail to discuss preventing a copy
and restore attack, claim 14 only mentions "reducing vulnerability to copy
and restore attacks," without including details in the claim limitations
required for this, short of claiming that storing, reading and writing of
certain information is to a "hidden channel." The Appellants' argument that
only a compliant device can access the channel is also not reflected in claim
14 itself. Under the claim itself, the only requirement for the "drive" that
reads and writes to the channel, is that it be a "drive." Therefore, under a
fair reading of the limitations of claim 14, the "hidden channel" can be
read/written from any drive, and not specifically a "compliant device," as the
Appellants argue. 5 We therefore find no reversible error with the
5 The Appellants argue that the Examiner misinterprets how the term
"hidden channel" should be construed. Reply Br. ii. The Appellants appear
to construe this term as a memory accessible only by a compliant device.
Id.; App. Br. 7. However, as above, the Appellants' apparent construction of
the term "hidden channel" is not reflected in its use in claim 14, because any
type of drive can access it.
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Application 12/176,074
Examiner's findings regarding Kunita's teachings as applied to the
obviousness determination of claim 14.
We therefore sustain the obviousness rejection of claim 14, and claims
15 and 17-19 that depend from it.
Claim 16
The Appellants argue that Kunita fails to disclose a step of refusing to
permit a distribution and/or use of the digital right on the drive comprising
"processing user right information read from the hidden channel in
combination with the usage right information read from the channel that is
not hidden." App. Br. 9. The Examiner finds that Kunita teaches secret and
nonsecret data used in combination. Ans. 8. (citing Kunita 2:35-61).
We find no reversible error with the Examiner's findings that Kunita
teaches the use of secret and nonsecret data in combination, because
accessing the secret data requires a user to input a password, resulting in the
secret data and then the nonsecret data being called. Kunita 2:57---61.
Contrary to the Appellants' arguments, Ginter, not Kunita, teaches the
verification and refusal in the control of digital rights. We do not find the
Appellant's arguments against the individual references persuasive. One
cannot show nonobviousness by attacking references individually where the
rejections are based on combinations of references. See In re Keller, 642
F.2d 413, 426 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986).
We therefore sustain the obviousness rejection of claim 16.
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Application 12/176,074
Claims 23 and 24
The Appellants argue that neither Ginter nor Kunita teach usage right
information that includes verification information, and that neither teach
updating verification information in the hidden channel with each
distribution or use of the digital right. App. Br. 8. The Examiner finds that
Ginter discloses the verification information and updated stored usage right
information, and relies on Kuni ta to teach the hidden channel. Ans. 8-9.
A claimed invention is not patentable if the subject matter of the
claimed invention would have been obvious to a person having ordinary skill
in the art. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). "The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." Id. at 416. In
determining whether obviousness is established by combining the teachings
of the prior art, "the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art." In re Keller, 642
F.2d at 425.
We discern no reversible error with the Examiner's findings that the
combination of Ginter and Kunita teach usage right information that
includes verification, as well as updating hidden verification information
with each distribution or use. Again, one cannot show nonobviousness by
attacking references individually and the Appellants' arguments are against
the individual references and not to the combination, thus there is no error in
the Examiner's rejection. Id. at 426.
We therefore sustain the obviousness rejection of claims 23 and 24.
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Application 12/176,074
SUMMARY
The rejections of claims 14--19, 23, and 24 under 35 U.S.C. § 101 are
reversed.
The rejections of claims 14--19, 23, and 24 under 35 U.S.C. § 112,
second paragraph, are reversed.
The rejections of claims 14--19, 23, and 24 under 35 U.S.C. § 103(a)
over Ginter and Kunita are 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)(l).
AFFIRMED
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