09941606 (B.P.A.I. Oct. 17, 2011)

Ex Parte Erickson et al

Board of Patent Appeals and InterferencesOct 17, 2011

09941606 (B.P.A.I. Oct. 17, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _____________ Ex parte JOHN S. ERICKSON and MARK SCHLAGETER _____________ Appeal 2009-012478 Application 09/941,606 Technology Center 2100 ______________ Before ALLEN R. MACDONALD, ROBERT E. NAPPI, and KRISTEN L. DROESCH, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-012478 Application 09/941,606 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 1 through 11. We affirm. INVENTION The invention is directed an electronic media container. See pages 3 and 4 of Appellants’ Specification. Claim 1 is representative of the invention and reproduced below: 1. A secure electronic media container for storing, transporting and/or providing a rights management interface to electronic media content, said container having said electronic media content stored therein and data, external of but attached to or otherwise associated with said container, representative of the media handler and/or a rights management mechanism required to open and play said content. REFERENCE Shear U.S. 2001/0042043 A1 Nov. 15, 2001 REJECTION AT ISSUE The Examiner has rejected claims 1 through 11 under 35 U.S.C. § 102(e) as being anticipated by Shear. Answer 4-8.1 ISSUE Claims 1, 3, 4, and 6-9 Appellants argue, on pages 13 through 15 of the amended Brief2 and pages 6 and 7 of the Reply Brief, that Shear does not teach a secure 1 Throughout this opinion we refer to the Examiner’s Answer mailed on March 24, 2008. Appeal 2009-012478 Application 09/941,606 3 container with external data as claimed. Thus, Appellants’ arguments present us with the issue: did the Examiner err in finding that Shear teaches a container with data external to the content of the container as recited in claim 1? Claim 5 Appellants argue on pages 15 and 16 of the Amended Brief that Shear does not teach metadata which includes network resource address at which the content is stored. Thus, Appellants’ arguments present us with the issue: did the Examiner err in finding that Shear teaches metadata identifying a remote network address at which content is stored? Claims 2, 8, 10, and 11 Appellants argue on pages 16 and 17 of the Amended Brief that Shear does not teach reading the external data as claimed. Thus, Appellants’ arguments present us with the issue: did the Examiner err in finding that Shear teaches reading the external data and determining the media handler required to access the content or access the determined media handler? ANALYSIS Claims 1, 3, 4, and 6-9 We have reviewed the Examiners’ rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ 2 Throughout this opinion we refer to the Amended Brief dated June 1, 2007, the second amended Brief dated August 9, 2007 and the Reply Brief dated November 19, 2007. Appeal 2009-012478 Application 09/941,606 4 conclusion that the Examiner erred in finding that Shear teaches a container with data external to the content of the container as recited in claim 1. Initially, we note that claim 1 recites an electronic media container having content stored therein and data, external to the container representative of the media handler and/or rights management mechanism to open and play said content. Claim 1 does not recite a mechanism or step which makes use of the external data, nor does the data change an underlying substrate of the container as there is no underlying substrate claimed. Thus, we consider the claimed external data which is “representative of the media handler and/or a rights management mechanism required to open and play said content” to be non-functional descriptive material. As non-functional descriptive material, this limitation which merely describes the data and does not differentiate the claimed data from the data in the prior art.3 Nonetheless, the Examiner has found and we concur that Shear teaches such data external to a secure container. Answer 8-9. Specifically, Shear teaches a secure container, item 206 in figures 3 and 4 (described in paragraphs 220 and 250). See also embodiment depicted in Figure 7 (described in paragraphs 283-284). This secure container has associated with it data external to the container, see, e.g., metadata 202 and keys 208 in 3 The Examiner need not give patentable weight to descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); and our decision in Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005) (informative), aff’d No. 06-1003 (Fed. Cir. Jun. 12, 2006) (Rule 36). Appeal 2009-012478 Application 09/941,606 5 figure 3.4 Appellants’ arguments do not address this data which is external to the container. This external data may comprise navigation information (address information) and keys to decrypt the properties for playback (rules of right management to playback content). Paras. 0213, 0215, 0216. Thus, we consider there to be ample evidence to support the Examiner’s finding that Shear teaches data external to the secure container which is representative of the media handler or rights management mechanism to open and play the content. For all of the above reasons, Appellants’ arguments have not persuaded us that the Examiner erred in rejecting claim 1 by finding that Shear teaches an external container with data external to the content of the container. Accordingly, we will sustain the Examiner’s rejection of claims 1, 3, 4, and 6-9. Claim 5 We have reviewed the Examiners’ rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusion that the Examiner erred in finding that Shear teaches metadata identifying a remote network address at which content is stored. As with claim 1, the argued limitation of claim 5 is directed to the content of the data and does not recite a mechanism or step which makes use of the external data, nor does the data change an underlying substrate of the container. Thus, the limitation represents non-functional descriptive material and does 4 See also information items 708 and 710 in figure 7, described in paragraphs 283, 284 which identifies protection information is stored external to the secure container. Appeal 2009-012478 Application 09/941,606 6 not differentiate the claim from the prior art. Further, as discussed above, with respect to claim 1, Shear teaches the external data may include navigation information (address information). Accordingly, Appellants’ have not persuaded us of error in the rejection of claim 5. Claims 2, 8, 10, and 11 We have reviewed the Examiners’ rejections in light of Appellants’ arguments that the Examiner has erred. We disagree with Appellants’ conclusion that the Examiner erred in finding that Shear teaches reading the external data and determining the media handler required to access the content or access the determined media handler. As discussed above we concur with the Examiner’s finding that Shear teaches data external to a secure container representative of the media handler and/or a rights management mechanism to open and play said content. Further, the Examiner finds that Shear teaches reading the rights management data and accessing the digital rights accordingly. Answer 8. We concur with the Examiner’s analysis. See also for example keys item 208 which unlock the controls items 222 that are then used by the player based upon it’s capability, Figs 2 and 3B, and paras. 216, 220, 250. Accordingly, the Appellants have not persuaded us that the Examiner erred in finding that Shear teaches reading the external data and determining the media handler required to access the content or access the determined media handler and we sustain the Examiner’s rejection of claims 2, 8, 10, and 11. Appeal 2009-012478 Application 09/941,606 7 DECISION The decision of the Examiner to reject claims 1 through 115 is 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)(1)(iv). AFFIRMED msc 5 We have decided the appeal before us. However, should there be further prosecution of these claims, the Examiner’s attention is directed to the recently issued guidance from the Director and our reviewing court: Should there be further prosecution of claims 1 through 11 which recite the data structure external to a media container, the Examiner’s attention is directed to MPEP § 2106.01, Computer-Related Nonstatutory Subject Matter, and In Re Warmerdam, 33 F.3d 1354 (Fed. Cir. 1994). Should there be further prosecution of claim 2 and other claims reciting limitations in accordance with 35 U.S.C. § 112 sixth paragraph, the Examiner’s attention is directed to Ariad Pharms., Inc. v. Eli Lilly & Co, 598 F.3d 1336 (Fed. Cir. 2010) (en banc); Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed. Cir. 2008); and Suppl. Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 Fed. Reg. 7162, 7167-71 (Feb. 9, 2011).