Ex Parte Erickson

Patent Trial and Appeal Board

Mar 28, 2014

10839328 (P.T.A.B. Mar. 28, 2014)

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.
10/839,328 05/04/2004 John S. Erickson P0980 6117
23735 7590 03/28/2014
DIGIMARC CORPORATION
9405 SW GEMINI DRIVE
BEAVERTON, OR 97008
EXAMINER
CALLAHAN, PAUL E
ART UNIT PAPER NUMBER
2437
MAIL DATE DELIVERY MODE
03/28/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN S. ERICKSON
____________

Appeal 2011-009596
Application 10/839,328
Technology Center 2400
____________

Before JOSEPH L. DIXON, JAMES R. HUGHES, and
ERIC S. FRAHM, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-009596
Application 10/839,328

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-4, 6-9, and 17.1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

INVENTION
The invention is directed to “secure electronic copyright management
and automatic identification of ownership of creative works distributed as
digital or electronic media, particularly over computer networks” (Spec.
3:31-33). Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An apparatus to render content according to pre-
established permissions associated with the content, said
apparatus comprising:

electronic processing circuitry;

executable instructions for execution by said processing
circuitry, said instructions to:

control rendering of content according to pre-established
permissions associated with the content, wherein, at a
minimum, the rendering comprises a preview of the content;
and

facilitate communication with an external processor to
obtain both at least a portion of content and supplemental
permissions, wherein the supplemental permissions extend

1 The Examiner previously indicated claims 5, 11-16, and 18 recite
allowable subject matter (Final Rej. 7), and the Examiner has withdrawn the
rejection of claim 10 in response to Appellant’s arguments (Ans. 12).
Appeal 2011-009596
Application 10/839,328

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permissible rendering of the content beyond the pre-established
permissions; and

an output through which content is rendered.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hellman

Ginter
US 4,658,093

US 5,917,912
Apr. 14, 1987

June 29, 1999

REJECTION
Claims 1-4, 6-9, and 17 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hellman and Ginter.

ANALYSIS
Regarding claim 1, Appellant contends
neither Hellman nor Ginter teach, show, or suggest the
communication of the content, either in whole or in part, with
the assumed supplemental permissions. Hellman and Ginter do
not even evidence any desire or motivation to communicate
content with their permissions that extend the number of
software uses allowed to a software user.

(App. Br. 7). For example, Appellant argues, “when additional uses of the
software are acquired by the user, Hellman does not deliver any portion of
the software or content to the user. No content is ever obtained in Hellman
beyond the initial delivery of the content or software to the user for use.”
(Id.).
Appeal 2011-009596
Application 10/839,328

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We agree with the Examiner (see Ans. 7-11) that Appellant’s
arguments are not commensurate with the broader scope of claim 1 and are
therefore not persuasive. Claim 1 merely recites an apparatus that can
“facilitate communication with an external processor to obtain both at least a
portion of content and supplemental permissions.” Claim 1 does not recite
obtaining content with supplemental permissions concurrently (Ans. 10).
Rather, the apparatus of claim 1 need only be capable of facilitating
communication to obtain different pieces of information, content and
supplemental permissions, without regard to when each piece of information
is actually obtained. Moreover, claim 1 also does not require obtaining
additional content beyond some initial content (Ans. 8-9, 10-11). In other
words, claim 1 encompasses an apparatus within which the “pre-established
permissions” and “supplemental permissions” relate to the same content.
Accordingly, we are not persuaded of error in the Examiner’s conclusion
that claim 1 is obvious over Hellman and Ginter because Appellant’s
arguments are not commensurate with the limitations of claim 1.
We are therefore not persuaded that the Examiner erred in rejecting
claim 1, and claims 2-4, 6-9, and 17 not specifically argued separately.

CONCLUSION
The Examiner did not err in rejecting claims 1-4, 6-9, and 17 under 35
U.S.C. § 103(a).

DECISION
The Examiner’s decision rejecting claims 1-4, 6-9, and 17 is affirmed.
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Application 10/839,328

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED

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