Ex Parte FUNG et al

Patent Trial and Appeal Board

Nov 21, 2016

13099808 (P.T.A.B. Nov. 21, 2016)

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.
13/099,808 05/03/2011 Joseph Zhung Yee FUNG 10-539-US-C2 1613
98804 7590
Reed Smith LLP
P.O. Box 488
Pittsburgh, PA 15230
11/23/2016 EXAMINER
SHERR, MARIA CRISTI OWEN
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
11/23/2016 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):
ptoipinbox @reedsmith.com
mskaufman @reedsmith. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH ZHUNG YEE FUNG,
ROBERT CHANCELLOR,
THOMAS DEMARTINI,
MAI NGUYEN,
THANH TA,
VINCENT HSIANG TIEU,
DUC TRAN,
and EDGARDO VALENZUELA
Appeal 2014-005052
Application 13/099,808
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. FETTING, and
BIB HU R. MOHANTY, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2014-005052
Application 13/099,808
STATEMENT OF THE CASE1
Joseph Zhung Yee Fung, Robert Chancellor, Thomas Demartini, Mai
Nguyen, Thanh Ta, Vincent Hsiang Tieu, Due Tran, and Edgardo
Valenzuela (Appellants) seek review under 35 U.S.C. § 134 of a final
rejection of claims 10-45, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented an extensible grammar based rights expression
system and method to allow processing of new rights expressions.
Specification para. 3.
An understanding of the invention can be derived from a reading of
exemplary claim 10, which is reproduced below (bracketed matter and some
paragraphing added).
10. A computer-implemented method executed by one or more
computing devices for processing one or more rights
expressions, the method comprising:
[1] registering,
by at least one of the one or more computing
devices,
configuration information of at least one of one or more
interpreters with a framework,
wherein the framework provides an interface
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed June 12, 2013) and Reply Brief (“Reply Br.,” filed December 16,
2013), and the Examiner’s Answer (“Ans.,” mailed October 15, 2013), and
Final Action (“Final Act.,” mailed November 13, 2012).
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Application 13/099,808
between the at least one of the one or more
interpreters and a computer processor
configured to process at least one of the one
or more rights expressions
based on the at least one of the one or
more interpreters;
[2] invoking,
by at least one of the one or more computing
devices using the framework,
an interpreter of the one or more interpreters for
processing at least one of the one or more rights
expressions
based on a programmatic call from the computer
processor and the registered configuration information;
and
[3] authorizing,
by at least one of the one or more computing
devices using the invoked interpreter,
digital content utilization in accordance with at least one
of the one or more rights expressions.
The Examiner relies upon the following prior art:
Holmes US 6,119,108 Sep. 12, 2000
Claims 10-45 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Holmes.
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Appeal 2014-005052
Application 13/099,808
ISSUES
The issues of anticipation turn primarily on whether the plug-in of
Holmes requires installation parameters and its decryption is within the
scope of “interpretation.”
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art - Holmes
01. Holmes is directed to an electronic publishing system that is
able to automatically, electronically distribute copyrighted objects,
provide deterrents to unauthorized use of such objects, collect
copyright royalty fees for use of such objects, and track and
encourage possession/redistribution of such objects, while
allowing access to the contents of the redistributed objects only if
appropriate copyright royalties are paid for same. Holmes 1:6—13.
02. Holmes describes how the PACS assigns to each object stored
in the EOD a unique publisher object token ("token")
representing/containing the respective unique publisher
identification and object licensing information (e.g., license price,
continuing period payments, limitations on use, etc.) associated
with that object. These tokens are stored in the TPPID, and the
PACS embeds the respective token data and certain program
instruction data into the respective object file, which may include
an industry standard type of data format, such as Adobe
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Application 13/099,808
Acrobat.TM. Personal Document Format (PDF) associated with
the data in such a way as not to affect the computer reproducibility
of the object whose data is contained in the data file. For
example, if the data format of the object is a document file in
Adobe PDF format, the PACS may accomplish this by embedding
the program instruction and respective token data as
hidden/invisible data randomly located within the document file.
For example, individual sub-components (individual letters and/or
word) of the program instruction and respective token data may be
randomly embedded as hidden/invisible data within the document
file data stream. The document data files with the embedded
respective program instruction and token data (hereinafter termed
"sealed object files") are then stored in the EOD. Holmes 4:34—
58.
03. Holmes describes how if the sealed object(s) are in Adobe PDF,
the user may seek access via appropriately loading and using the
Adobe Acrobat Reader and associated plug-in. The program
instructions contained in the sealed document cause the plug-in to
search the sealed file for hidden/invisible object(s) containing
sensitive user information. If the current user access being
attempted is the first one after initial download of the sealed file
via the CN, such sensitive user information will not be present in
the sealed file. This will cause the plug-in to only permit the
aforesaid Adobe Acrobat Reader to permit user access to certain
portions (e.g., an abstract or summary) of the document whose
data is contained in the sealed file, and to prompt the user (e.g.,
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Appeal 2014-005052
Application 13/099,808
via a graphical user interface) to purchase a user access license for
the document if the user wishes complete access to the document.
The specific terms of the license are generated by the plug-in
based upon the token data embedded in the sealed file, and are
displayed along with the license purchase prompt. Holmes 5:5—
24.
04. Holmes describes how the plug-in modifies the sealed file so as
to cause a "security message" (e.g., containing the sensitive user
information, terms under which the user's license for the document
was granted, and/or legal warnings concerning copyright
infringement) to be displayed or printed in text fields around the
document when same is viewed or printed, respectively, while
maintaining the original formatting of the document. The plug-in
may accomplish this modification by randomly inserting text
objects of each letter or word of the text fields in the data stream
of the sealed file. The plug-in then encrypts at least the portions
of the sealed file that contain the document data using the
sensitive user information as the encryption password key. This
encryption may be carried out using the Adobe RC4 PDF
encryption method. The plug-in then generates a message to the
user indicating that future access to portions of the document other
than the aforesaid certain portions thereof (e.g., document abstract
or summary) will require the user to enter the sensitive user
information as a password. Access to the unencrypted document
will then be permitted by the plug-in, but any viewing and printing
or electronic retransmission of the document by the Adobe
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Application 13/099,808
Acrobat Reader will include the aforesaid security message
around the document. Holmes 5:45—6:3.
ANALYSIS
The Examiner applies an admittedly creative view of Holmes, so before
we begin we illustrate how the Examiner is so interpreting Holmes. Holmes
describes a security plug-in to Adobe Acrobat that takes a password to
access a decrypted version of a document. The Examiner maps the plug-in
to the recited interpreter, as the plug-in’s decryption feature interprets the
document so as to make it readable. The plug-in is an add-on and so must be
registered with the underlying Adobe Acrobat. The Examiner maps the
password to the configuration information, as the plug-in configuration
information must have some data that is compared to the entered password
for the password enablement to occur. The plug-in is invoked to process the
viewing of the document, and such process uses data scattered throughout
the file to establish the right to view and so is necessarily rights information.
The display for viewing inherently includes authorizing for such viewing.
Thus, Holmes anticipates claim 10.
We are not persuaded by Appellants' argument that the claims recite
registering interpreter configuration information, as opposed to licensing
terms information. App. Br. 6. The Examiner mapped Holmes’s plug-in
parameters to the recited configuration parameters.
We are not persuaded by Appellants' argument that Holmes fails to teach
or suggest invocation of an interpreter based on configuration information of
the interpreter registered with the system, as neither the plug-in nor the
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Application 13/099,808
executable file are invoked based on configuration information registered
with the system. App. Br. 8. A plug-in, being an addition to an existing
program, is necessarily invoked based on the parameters defining the
interaction between the plug-in and the host program. Also, as the Examiner
finds, Holmes’s plug-in necessarily has a parameter for validating the
entered password, and this matching is the basis for subsequent decryption
(interpretation). Ans. 9.
We are not persuaded by Appellants' argument that rights expressions
are processed by an invoked interpreter for authorizing use of content. App.
Br. 10. The limitation at issue is “invoking, by at least one of the one or
more computing devices using the framework, an interpreter of the one or
more interpreters for processing at least one of the one or more rights
expressions.” Ans. 5. This does not recite that the rights expressions are
processed by an invoked interpreter per se, but only that invoking the
interpreter is a precursor to processing the rights expressions.
We are not persuaded by Appellants' argument that the interpretation of
Holmes is inconsistent in mapping to the claims. App. Br. 10—11. The
Examiner’s analysis, supra, is consistent as articulated.
CONCLUSIONS OF LAW
The rejection of claims 10-45 under 35 U.S.C. § 102(b) as anticipated
by Holmes is proper.
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Application 13/099,808
DECISION
The rejection of claims 10-45 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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