Ex Parte Cappio et al

Patent Trial and Appeal Board

Oct 31, 2018

11110303 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/110,303 04/19/2005 AdamCappio
73486 7590 11/02/2018
Barnes & Thornburg LLP (Intel)
11 S. Meridian Steet
Indianapolis, IN 46204
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.
P49857/45631-266648 2657
EXAMINER
AGWUMEZIE, CHINEDU CHARLES
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
Inteldocs _ docketing@cpaglobal.com
INdocket@btlaw.com
inteldocket@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM CAPPIO and JOSHUA D. HUG
Appeal2017-006251
Application 11/110,303 1
Technology Center 3600
Before CARLA M. KRIVAK, NABEEL U. KHAN, and
AARON W. MOORE, Administrative Patent Judges.
KHAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 23--40. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify Intel Corporation as the real party in interest. Br. 3.
Appeal2017-006251
Application 11/110,303
BACKGROUND
THE INVENTION
According to Appellants, the invention relates to "the fields of content
licensing, and content rights management." Spec. ,r 1. Embodiments of the
invention include "methods for confirming proper receipt, recovery and/or
application of a license by a licensee client device." Spec. ,r 9.
Exemplary independent claim 23 is reproduced below.
23. A method of operation on a license server in
communication with a client device having a rights manager, the
method comprising:
generating, by the license server, a license defining rights
to certain contents on the client device;
obtaining, by the license server, a challenge identifier
targeting an intended recipient, the intended recipient
corresponding to at least one of the rights manager and the client
device;
encrypting, by the license server, the license and the
challenge identifier into an encrypted communication for the
intended recipient;
challenging, by the license server, the intended recipient
to demonstrate successful application of the license, wherein the
challenging includes sending the encrypted communication to
the intended recipient; and
confirming, by the license server, that the encrypted
communication was not intercepted by a spoofing device and that
the intended recipient successfully applied the license, wherein
the confirming includes receiving, by the license server from the
intended recipient, a confirmation response corresponding to the
challenge identifier.
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Appeal2017-006251
Application 11/110,303
REFERENCES AND REJECTION
Claims 23--40 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Misra (US 2005/0102240 Al; published May 12, 2005) and Weber (US
2006/0173787 Al; published Aug. 3, 2006). Final Act. 6-12.
DISCUSSION
The Examiner finds both Misra and Weber separately and as a
combination teach "encrypting, by the license server, the license and the
challenge identifier into an encrypted communication for the intended
recipient," as recited in claim 23. Specifically, the Examiner finds Misra
teaches the disputed limitation by disclosing that "[t]he license server 32
digitally signs the software license ( step 206) and encrypts it using the
client's public key ... thereby binding the license to the client." Final Act. 7
(quoting Misra ,r 113) (emphasis removed). The Examiner also finds Weber
teaches the disputed limitation in Figures 9 and 10, which the Examiner
finds "disclose[] challenge and license 1902 and 2204[,] showing [a] process
for generating proof of a license." Final Act. 8 ( emphasis omitted) ( citing
Weber Figs. 9, 10, ,r,r 141, 144, 147, 149, 159, 171).
Appellants generally argue neither Misra nor Weber teach sending the
license and the challenge in the same encrypted communication to the
recipient. Rather, according to Appellants, in Misra and Weber, the
challenge is sent separately from the license. See Br. 21 ("[B]oth MISRA
and WEBER use separate and sequentially dependent challenges and/or
license requests .... "). For example, with regard to Misra, Appellants argue
"the client challenge is clearly sent separately from the license. In fact,
MISRA sends the client challenge before a license may even be sent to the
client." Br. 21. Regarding Weber, Appellants argue
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Appeal2017-006251
Application 11/110,303
Br. 22.
the described transmission of the license and the challenge identifier
in Figures 9 A, 9B, and 10 of WEBER are actually a responses
generated by the sink to a request made by the source after the license
has been sent. . . . The different examples shown in Figures 9 A, 9B
and 10 of WEBER are all based on events that occur after the license
has already been applied to the sink.
We are persuaded by Appellants' argument. Figure 6 of Misra
"shows steps in a method for granting a new software license from the
license server 28 to the client 30." Misra ,r 108. Figure 6 and its associated
description show that in response to a request for a license, a challenge is
sent to the client and only after a proper response is received does the license
server grant a license. See Misra Fig. 6, ,r,r 108-110. Thus, we agree with
Appellants that Misra sends the challenge before the license and not together
in the same encrypted communication.
Turning now to Weber, we note that Figure 10 relates to "verifying
the presence of a license in a secure container" (Weber ,r 140), and shows
"an example of the process for generating proof of a license in a secure
container." Weber ,r 14 7. According to Weber, when a challenge is
received from the source, the license management engine "gets the requested
license from memory ... and passes the acquired license data to the usage
rules administrator" which "determines whether the challenge is valid or
not." Weber ,r 148. This description indicates that the license is already
stored and present in the secure container before a challenge is received.
Thus, we agree with Appellants that Weber's Figure 10 relates to events
occurring after the license has already been applied and therefore, as with
Misra, Weber also does not teach sending the challenge and license together
in the same encrypted communication.
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Appeal2017-006251
Application 11/110,303
Accordingly, we do not sustain the Examiner's rejection of
independent claim 23. We also do not sustain the Examiner's rejection of
independent claim 34, which includes a limitation of commensurate scope
and was rejected on the same basis. See Final Act. 6-10. The pending
dependent claims stand with their respective independent claims.
DECISION
The Examiner's rejection of claims 23--40 is reversed.
REVERSED
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