Arnaud Robert et al.Download PDFPatent Trials and Appeals BoardOct 29, 201912460003 - (D) (P.T.A.B. Oct. 29, 2019) Copy Citation 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. 12/460,003 07/10/2009 Arnaud Robert 0260233 2448 63649 7590 10/29/2019 DISNEY ENTERPRISES, INC. C/O FARJAMI & FARJAMI LLP 26522 LA ALAMEDA AVENUE, SUITE 360 MISSION VIEJO, CA 92691 EXAMINER AGWUMEZIE, CHINEDU CHARLES ART UNIT PAPER NUMBER 3685 NOTIFICATION DATE DELIVERY MODE 10/29/2019 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): docketing@farjami.com farjamidocketing@yahoo.com ffarjami@farjami.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ARNAUD ROBERT and SCOTT F. WATSON ____________ Appeal 2018-002596 Application 12/460,003 Technology Center 3600 ____________ Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1–26, 28, and 29. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies “Disney Enterprises, Inc., a wholly owned subsidiary of The Walt Disney Company” as the real party in interest. Appeal Br. 2. Appeal 2018-002596 Application 12/460,003 2 ILLUSTRATIVE CLAIM 1. A method for use by a key repository, having a memory and a processor, to provide access authorizations to a content, the method comprising: receiving, by the processor, a key information file from a preparer without receiving the content, the key information file including a first encrypted second key, encryption metadata and a content identification, the first encrypted second key being for decrypting with a first key; storing, by the processor, the key information file in the memory of the key repository, wherein the key repository neither stores nor distributes the content; decrypting, by the processor, the first encrypted second key using the first key to retrieve the second key; receiving, by the processor from a distributor distributing the content to a consumer, a key request including the content identification; encrypting, by the processor, the second key using a third key to generate a second encrypted second key, wherein the processor identifies the second key using the content identification received from the distributor; and transmitting, by the processor, the second encrypted second key to the distributor in response to the receiving of the key request, the distributor receiving the content from the preparer and not the key repository, and the distributor providing the content and a DRM license including the second key for decrypting the content to the consumer. Appeal 2018-002596 Application 12/460,003 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Downs US 6,226,618 B1 May 1, 2001 Cocchi US 2008/0089516 A1 April 17, 2008 REJECTIONS I. Claims 1–26, 28, and 29 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. II. Claims 1–26, 28, and 29 are rejected under 35 U.S.C. § 103(a) as unpatentable over Downs and Cocchi. FINDINGS OF FACT The findings of fact relied upon, which are supported by a preponderance of the evidence, appear in the following Analysis. ANALYSIS Rejection I Claims 1–26, 28, and 29 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement, because independent claims 1, 15, and 29 are said to lack sufficient disclosure for the limitations “without receiving the content” and “wherein the key repository neither stores nor distributes the content.” Final Act. 2–3. These limitations appear, as follows, in the context of claim 1: receiving, by the processor, a key information file from a preparer without receiving the content, the key information file including a first encrypted second key, encryption metadata and Appeal 2018-002596 Application 12/460,003 4 a content identification, the first encrypted second key being for decrypting with a first key; [and] storing, by the processor, the key information file in the memory of the key repository, wherein the key repository neither stores nor distributes the content. (Emphasis added). Pursuant to the written description requirement of 35 U.S.C. § 112 (pre-AIA), first paragraph, “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co, 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (citations omitted). However, “the level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology.” Id. (citation omitted). The Appellant contends that Figure 1 and its characterization in the Specification satisfies the written description requirement for the claimed features at issue: Appellant respectfully submits that FIG. 1 and its related written description disclose and teach that preparer 130 sends keyinfo file 150 including encrypted key 152 for the title to keychest 160, and preparer 130 also sends universal file 140 including encrypted file 145 or content to media distributor 170. As shown in FIG. 1 and described in the written description, keychest 160 does not receive encrypted file 145 or content from preparer 130, and as such, neither stores nor distributes encrypted file 145 or content in memory 159, as shown in FIG. 1. Rather, it is media distributor 170 that receives, stores and distributes encrypted file 145 or content. Appeal Br. 8–9. Appeal 2018-002596 Application 12/460,003 5 Notwithstanding the Examiner’s contrary position (see Answer 3), Figure 1 of the Specification shows the transmission path of the claimed “content” (i.e., “Title 115” and “Encrypted Title 145”) from “Title Owner 110” to “Preparer 130” and then to “Media Distributor 170,” without transmitting the manifestations of the content to “Keychest 160.” This depicted flow of data reasonably conveys that the inventor was in possession of the invention as claimed, i.e., that neither the claimed key information file nor the claimed key repository include the content. Accordingly, we do not sustain the rejection under 35 U.S.C. § 112, first paragraph, with regard to independent claim 1 and (for similar reasons) independent claims 15 and 29, along with dependent claims 2–14, 16–26, and 28. Rejection II Among the arguments provided for the obviousness rejection, the Appellant contends that claim 1 stands rejected erroneously, because the Downs reference fails to disclose the following features (emphasis added): transmitting, by the processor, the second encrypted second key to the distributor in response to the receiving of the key request, the distributor receiving the content from the preparer and not the key repository, and the distributor providing the content and a DRM license including the second key for decrypting the content to the consumer. See Appeal Br. 12. The Appellant explains: According to Downs, clearing house 105 provides a DRM [digital rights management] license to end user device 109, in response to receiving the encrypted content key from end user 109. In contrast, independent claim 1 recites “the distributor providing the content and a DRM license including the second key for decrypting the content to the consumer.” In other words, according to independent claim 1, the same entity, i.e. the distributor, provides both the content and the DRM Appeal 2018-002596 Application 12/460,003 6 license. In Downs, however, end user device 109 receives the content from content hosting site 111, and receives the DRM license from the clearinghouse 105. Therefore, in contrast to independent claim 1, Downs teaches that the end user device 109 receives the content and the key from two different entities. Id. Addressing this point, the Examiner “submits that the issues of the number of machines or devices to employ is a matter of design choice especially where the results of the processing is [sic] the same as in this case.” Ans. 7. A so-called “design choice” rationale, such as the Examiner relies upon, has been deemed appropriate where one prior art element or property is proposed to be substituted for another that achieves the same purpose. See ACCO Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1367 (Fed. Cir. 2016) (“The prior art consistently locates the two sensors at issue in the shredder’s feed, and no party disputes that an ordinary artisan would have found this the obvious location for the combination of sensors. The ordinary artisan would then be left with two design choices.”); Ex parte Maeda, Appeal 2010-009814, 2012 WL 5294326, at *3 (PTAB Oct. 23, 2012) (informative). Cf. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (“The Board held that Gal had simply made an obvious design choice. However, the different structures of Gal and Matsumura achieve different purposes.”) Our reviewing court has cautioned that “[m]erely stating that a particular [limitation] is a design choice does not make it obvious.” Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 n.4 (Fed. Cir. 2018) (quoting Cutsforth, Inc. v. MotivePower, Inc., 636 F. App’x 575, 578 (Fed. Cir. 2016) (nonprecedential)). Appeal 2018-002596 Application 12/460,003 7 In the instant case, the Examiner does not adequately establish the predicate finding for a design-choice position — i.e., that the prior art provides an alternative element that achieves the same purpose as what is claimed. See ACCO Brands, 813 F.3d at 1367. The Examiner states that “the results of the processing” in Downs are “the same as” in claim 1; however, this finding lacks factual support. Moreover, the Appellant takes the position (which is supported by the Specification) that the claimed configuration entails benefits for security and interoperability of the claimed system. Reply Br. 2 (“Appellant respectfully submits that the ‘design choice’” argument made by the Answer misses key aspects of content distribution, which are security and an interoperable content distribution system.”); Spec. 26, ll. 15–19 (“Traditionally, transferring media files between different devices utilizing different DRM systems has been difficult or impossible, as proprietary closed system DRM formats tend to introduce incompatibilities preventing full interoperability. In addition to DRM interoperability challenges, media container formats and compression algorithms may result in even unprotected content not be playable on different platforms.”) Therefore, we do not sustain the rejection under 35 U.S.C. § 103(a), with regard to independent claim 1 and (for similar reasons) independent claims 15 and 29, along with dependent claims 2–14, 16–26, and 28. Appeal 2018-002596 Application 12/460,003 8 CONCLUSION In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1–26, 28, 29 112, first paragraph Written description 1–26, 28, 29 1–26, 28, 29 103(a) Downs, Cocchi 1–26, 28, 29 Overall Outcome 1–26, 28, 29 REVERSED Copy with citationCopy as parenthetical citation