Ex Parte Yen et al

Patent Trial and Appeal Board

Oct 28, 2016

12281977 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/281,977 07/13/2009
69849 7590 11/01/2016
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
379 Lytton Avenue
Palo Alto, CA 94301
Wei Yen
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.
25NP-157678 7584
EXAMINER
COONEY, ADAM A
ART UNIT PAPER NUMBER
2443
NOTIFICATION DATE DELIVERY MODE
11/01/2016 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):
svpatents@sheppardmullin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WEI YEN, PRAMILA SRINIVASAN,
JOHN PRINCEN, RAYMOND LO, and WILSON HO
Appeal 2015-006521
Application 12/281,977
Technology Center 2400
Before JOHN A. EV ANS, CARL L. SILVERMAN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative PatentJudge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from a fmal
rejection of claims 2-16, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affrrm.
1 According to Appellants, the real party in interest is Acer Cloud
Technology (formerly iGware, Inc.). App. Br. 2.
Appeal 2015-006521
Application 12/281,977
STATEl\llhNT OF Tfil CASE
The Invention
According to Appellants, the invention involves content management
for a playback device. Abstract; see Spec. 2:3-19. 2 A system implementing
the invention "may include a state server that receives runtime state of
content from a playback device, and provides the runtime state to that or
another playback device upon request." Abstract.
Representative Claim
Independent claim 2 exemplifies the subject matter of the claims
under consideration and reads as follows:
2. A system comprising:
a network;
a license server, wherein in operation, the license server
provides an E-ticket to a playback device coupled to the
network;
a content server coupled to the license server, wherein in
operation, the content server provides content to the playback
device;
a state server coupled to the content server, wherein in
operation, the state server:
receives from the playback device application save
data correspondingto a state of the content,
verifies a cryptographic signature of the application
save data to authenticate the application save data, and
2 This decision uses the following abbreviations: "Spec." forthe
Specification, filed July 13, 2009; "Final Act." for the Final Office Action,
mailed May 20, 2014; "Adv. Act." forthe Advisory Action, mailed
August 28, 2014; "App. Br." forthe Appeal Brief, filed November 21, 2014;
"Ans." forthe Examiner's Answer, mailed April 24, 2015; and "Reply Br."
forthe Reply Brief, filed June 18, 2015.
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Application 12/281,977
provides, in response to a request from the piayback
device, verified application save data to the playback
device, thereby managing storage and retrieval of the
state of the content;
wherein the playback device has permission to execute
the content in accordance with the state of the content provided
in the application save data.
App. Br. 24 (Claims App.).
The Prior Art Supporting the Rejection on Appeal
Friend
Liu et al. ("Liu")
Futagawa
WO 2004/053720 Al June 24, 2004
US 2007 /0219917 Al Sept. 20, 2007
US 7,814,081 B2 Oct. 12, 2010
(filed Aug. 25, 2005)
The Rejection on Appeal
Claims 2-16 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Liu, Friend, and Futagawa. Final Act. 5-13; App. Br. 2.
ANALYSIS
We have reviewed the rejection of claims 2-16 in light of Appellants'
arguments that the Examiner erred. For the reasons explained below, we
disagree with Appellants' assertions regarding error by the Examiner.
The Rejection of Claim 2 Under 35 U.S.C. § 103(a)
A STATE SERVER THAT RECEIVES DATA FROM "A PLAYBACK DEVICE"
AND PROVIDES VERIFIED DATA TO "THE PLAYBACK DEVICE"
The Examiner fmds that Friend and Futagawa teach a state server as
recited in claim 2. Final Act. 6-7; Ans. 3-4, 11-12. In particular, the
Examiner fmds that Futagawa teaches the claimed "application save data"
by disclosing "save data such as a list of acquired items, status of progress
and a score a user has in a game" and "the ability of a user to continue a
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game on a different terminai" based on the "save data." Ans. 11 (citing
Futagawa 1:50-56, 6:36-38). In addition, the Examiner fmds that Friend
teaches (1) transferring content from one user to "other users via a secure
intermediary location, where the other users are able to download the
content for playback" and (2) "a playback device in order for the content
associated with applications, such as a movie, video game, song, to be
played back .... " Id. at 11-12 (citing Friend pp. 20-21).
According to the Examiner, "the combination of Friend and Futagawa
does in fact teach the limitation" concerning a state server that receives
"application save data" from "a playback device" and provides upon request
"verified application save data" to "the playback device" as recited in
claim 2. Ans. 12; see Final Act. 6-7; Ans. 3-4.
Appellants argue that a state server according to claim 2 receives
"application save data" from "a playback device" and provides upon request
"verified application save data" to "the [same] playback device." App.
Br. 13; see Reply Br. 2. Appellants seek to distinguish claim 2 from Friend
by asserting that (1) "[t]here is not a single 'playback device' in Friend that
sends data to and receives data from the secure intermediary system"
corresponding to the state server and (2) the user devices that download
content from the secure intermediary system "are distinct" from the user
device that uploads content to the secure intermediary system. App. Br. 13;
see Reply Br. 2-3.
We discern no error in the Examiner's application of the claim
language to the prior art. The "indefmite article 'a' or 'an' in patent parlance
carries the meaning of' one or more' in open-ended claims containing the
transitional phrase' comprising."' KCJ Corp. v. Kinetic Concepts, Inc.,
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Application 12/281,977
223F.3d1351, 1356 (Fed. Cir. 2000). "Unless the claim is specific as to the
number of elements, the article 'a' receives a singular interpretation only in
rare circumstances when the patentee evinces a clear intent to so limit the
article." Id. "The subsequent use of defmite articles 'the' or' said' in a
claim to refer back to the same claim term does not change the general plural
rule, but simply reinvokes that non-singular meaning." Baldwin Graphic
Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1342 (Fed. Cir. 2008). Moreover,
"during examination proceedings, claims are given their broadest reasonable
interpretation consistent with the specification." In re Hyatt, 211 F.3d 1367,
1372 (Fed. Cir. 2000).
Under these general principles, Futagawa discloses a state server that
receives "application save data" from "a playback device" and provides
upon request "verified application save data" to "the playback device" as
recited in claim 2. See Futagawa Abstract, 1:50-63, 3:6-21, 6:36-38, Fig. 7.
Appellants point to nothing in the claim language, the Specification, or the
prosecution history that evinces a clear intent to impart a singular
interpretation to the article "a." App. Br. 11-14; Reply Br. 2--4.
But even if claim 2 requires that a single playback device send
"application save data" to a state server and receive "verified application
save data" from the state server, Appellants arguments have not persuaded
us of Examiner error. The Examiner relies on "the combination of Friend
and Futagawa" to teach a state server according to claim 2 that receives data
from and provides data to the claimed playback device. Ans. 12; see Final
Act. 6-7; Ans. 3--4. "[T]he test for combining references is not what the
individual references themselves suggest but rather what the combination of
disclosures taken as a whole would suggest to one of ordinary skill in the
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Application 12/281,977
art." Jn re McLaughlin,443F.2d1392, 1395(CCPA1971); see Jn re
Keller, 642 F.2d413, 425(CCPA1981). Appellants do not address what
the Friend-Futagawa combination "taken as a whole would suggest to one of
ordinary skill in the art" and, therefore, have not established Examiner error.
App. Br. 11-14; Reply Br. 2--4.
In the Appeal Brief, Appellants imply that the Examiner relies on
official notice to support the obviousness rejection, saying, "To the extent
the Examiner is relying of [sic] Official Notice to assert the multiple user
devices of Friend are analogous to a single 'playback device' as claimed,
Appellant [sic] respectfully requests documentary evidence (such as a
declaration entered during prosecution) to that effect." App. Br. 13. In the
Reply Brief, Appellants go further and assert that "the Examiner has
improperly taken official notice that the multiple user devices of Friend are
analogous to a single playback device with the claimed characteristics."
Reply Br. 4. But Appellants cite no paper in which the Examiner took
official notice of any fact. App. Br. 13; Reply Br. 4.
Additionally, the Final Office Action, the Advisory Action, and the
Answer do not mention official notice when discussing the rejection of
claim 2 (or any other claim). Final Act. 2-13; Adv. Act. 2-3; Ans. 2-14.
A STATE SERVER THAT PROVIDES VERIFIED APPLICATION SAVE DATA
Claim 2 requires that the state server "verif[y] a cryptographic
signature of the application save data to authenticate the application save
data" and upon request "provide[] ... verified application save data to the
playback device." App. Br. 24 (Claims App.). The Examiner fmds that
Friend discloses "an authentication process that that verifies the digital
signature of the user, so that the content may be transferred and ultimately
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piayed back." Ans. 12-13; see Adv. Act. 3; Final Act. 6; Ans. 3. The
Examiner determines that in Friend "the content is verified by verifying the
digital signature ofthe content." Ans. 13.
Appellants seek to distinguish claim 2 from Friend by asserting that
Friend's authentication process "verifies a user signature" but does not
"verify data or provide verified data to a playback device." App. Br. 16;
Reply Br. 5. Appellants also assert that "[p ]rocessing of a 'frrst party user
digital signature' [according to Friend] means to determine that the 'frrst
party user digital signature' is what it says it is." App. Br. 16; Reply Br. 5.
In addition, Appellants contend that the Examiner "conflates verification of
a digital signature of a user with verifying 'application save data."' Reply
Br. 5.
Appellants' arguments are not commensurate in scope with claim 2.
Claim 2 requires verifying "a cryptographic signature of the application save
data" rather than verifying the "application save data" itself. App. Br. 24
(Claims App.). Thus, we agree with the Examiner that "the content is
verified by verifying the digital signature of the content." Ans. 13.
Claims 10 and 14 comportwith this analysis. Each claim recites
"verified application save data." App. Br. 25-26 (Claims App.). Claim 10
merely requires that the "verified application save data" have "a
cryptographic signature verified by the state server." Id. at 25. Similarly,
claim 14 merely requires that the "verified application save data" have "a
verified cryptographic signature." Id. at 25. "[T]he same terms appearing in
different claims in the same patent ... should have the same meaning
'unless it is clear from the specification and prosecution history that the
terms have different meanings at different portions of the claims.'" Wilson
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Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F .3d 1322, 1328
(Fed. Cir. 2006) (quoting Fin Control Sys. Pty, Ltd. v. OAM, Inc., 265 F.3d
1311, 1318 (Fed.Cir.2001)). Here, Appellants articulate no reason why the
term "verified application save data" should have a different meaning in
claims 10 and 14 than in claim 2. App. Br. 15-18; Reply Br. 4---6.
"THE PLAYBACK DEVICE HAS PERMISSION TO EXECUTE THE CONTENT"
Claim 2 specifies that "the playback device has permission to execute
the content in accordance with the state of the content provided in the
application save data." App. Br. 24 (Claims App.). The Examiner
"interprets the limitation to merely mean the playback device is able to
play/execute the content from its saved state" and "if a movie or game is
stopped, a user has permission (i.e. is able) to pick up where the movie or
game stopped." Ans. 14. The Examiner fmds that Futagawa teaches the
limitation by disclosing "save data from when the user previously terminated
the application program" and downloading the save data to "restor[e] a game
from where the user had left off .... " Final Act. 7; Ans. 4. The Examiner
also fmds that "Futagawa teaches this by disclosing the ability of a user to
continue (emphasis added) a game on a different terminal." Ans. 14.
Appellants assert that permissions according to Futagawa "are not
based on the state of content" but instead relate to program identification
numbers that "are not affected by changes to the predetermined application
programs." App. Br. 20; Reply Br. 7. Appellants do not address the
Examiner's interpretation ofthe "permission to execute" limitation. App.
Br. 18-21; Reply Br. 6-7.
As discussed above, "during examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
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Application 12/281,977
specification." Jn re Hyatt, 211 F .3d 1367, 1372 (Fed. Cir. 2000).
Accordingly, we discern no error in the Examiner's interpretation of the
"permission to execute" limitation. Further, Appellants' assertions
regarding permissions according to Futagawa do not respond to the
Examiner's fmding that Futagawa teaches the limitation by disclosing the
uploading of save data and the subsequent downloading of save data to
execute the content from its saved state. App. Br. 18-21; Reply Br. 6-7.
Thus, Appellants' assertions have not persuaded us of error relating to the
"permission to execute" limitation.
SUMMARY FOR CLAIM 2
For the reasons discussed above, Appellants' arguments have not
persuaded us that the Examiner erred in rejecting claim 1 for obviousness
based on Liu, Friend, and Futagawa. Hence, we sustain the obviousness
rejection.
The Rejection of Claims 10 and 14 Under 35 U.S.C. § 103(a)
Appellants do not articulate any patentability arguments for
independent claims 10 and 14 beyond the arguments regarding independent
claim 2. App. Br. 14--15, 17-18, 21; Reply Br. 2-7. Because Appellants do
not argue the claims separately, they stand or fall together. See 37 C.F.R.
§ 41.37(c)(l)(iv). Hence, we sustain the obviousness rejection.
The Rejection of Claims 2-5 Under 35 U.S.C. § 103(a)
Claims 3-9 depend from claim 2; claims 11-13 depend from
claim 10; and claims 15-16 depend from claim 14. App. Br. 24--27 (Claims
App.). Appellants do not present any separate patentability arguments for
any dependent claims. App.Br. 14--15, 17-18, 21; Reply Br. 1-5. Because
Appellants do not argue the dependent claims separately, we sustain the
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obviousness rejection of the dependent ciaims for the reasons applicabie to
the independent claims. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision to reject claims 2-16.
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).
AFFIRMED
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