Ex Parte Ha

Patent Trial and Appeal Board

Nov 14, 2017

13410981 (P.T.A.B. Nov. 14, 2017)

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.
13/410,981 03/02/2012 Eric Ha B1449US01/ADBS.208913 7754
121363 7590 11/16/2017
Shook, Hardy & Bacon L.L.P.
(Adobe Systems Incorporated)
Intellectual Property Department
2555 Grand Blvd
Kansas City, MO 64108
EXAMINER
TRAN, ELLEN C
ART UNIT PAPER NUMBER
2433
NOTIFICATION DATE DELIVERY MODE
11/16/2017 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):
IPDOCKET@SHB.COM
IPRCDKT@SHB.COM
mjj ordan @ shb .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC HA
Appeal 2017-003050
Application 13/410,981
Technology Center 2400
Before MICHAEL J. STRAUSS, SHARON FENICK, and
MICHAEL J. ENGLE, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-003050
Application 13/410,981
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1, 4—11, and 14—21. Claims 2, 3, 12, and 13 are canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
THE INVENTION
The claims are directed to digital rights management using device
proximity information. Spec., Title. Claim 1, reproduced below with a
disputed limitation emphasized in italics, is illustrative of the claimed
subject matter:
1. A computer-implemented method comprising:
providing a content access module in an electronic device
of a group of electronic devices;
receiving, at the electronic device, a conditional license
from a license server, the conditional license specifying that if
proximity information determined by the content access module
indicates that physical proximity of the electronic device to a
designated base electronic device is within a domain area
specified by a digital rights domain of the designated base
electronic device, access to a content item by the electronic
device is granted, wherein any of the group of electronic devices,
if within the domain area, is considered part of the digital rights
domain of the designated base electronic device;
determining the proximity information of the electronic
device with respect to the designated base electronic device using
the content access module;
evaluating the proximity information with respect to the
conditional license;
determining that, as a result of the evaluating, the
electronic device is eligible to access the content item; and
granting access to the content item based on the result of
the evaluating and determining, wherein the determining the
proximity information, the evaluating the proximity information,
the determining access eligibility, and the granting access steps
2
Appeal 2017-003050
Application 13/410,981
are performed by the content access module within the electronic
device.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Anderson
Williams
Brown
Hirsch
Kanaparti
US 2004/0078490 A1
US 2005/0124319 A1
US 2005/0125221 A1
US 2006/0277312 A1
US 2009/0254980 A1
Apr. 22, 2004
June 9, 2005
June 9, 2005
Dec. 7, 2006
Oct. 8, 2009
REJECTIONS
The Examiner made the following rejections:
Claims 1, 4, 10, 11, 14, 15, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Williams and Hirsch. Final Act. 4—9.
Claims 6 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Williams, Hirsch, and Anderson. Final Act. 9-10.
Claims 7 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Williams, Hirsch, and Brown. Final Act. 10.
Claims 8, 18, and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Williams, Hirsch, and Kanaparti. Final Act. 10-12.
APPELLANT’S CONTENTION1
Appellant argues that “in Williams, the source device and not the
receiving device makes determinations regarding access to content” and,
therefore, the reference fails to teach or suggest “that the determining [of]
the proximity information of the receiving device with respect to the source
1 We note Appellant raises additional contentions of error but we do not
reach them as our resolution of this contention is dispositive of the appealed
rejections under 35 U.S.C. § 103(a).
3
Appeal 2017-003050
Application 13/410,981
device is performed within the receiving device” as required by the
independent claims. App. Br. 10.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred in rejecting independent claims 1,11,
and 20 under 35 U.S.C. § 103(a) as being unpatentable over Williams and
Hirsch. We agree with Appellant’s arguments as to this rejection of the
claims.
Claim 1 requires four steps be performed by the content access
module within the electronic device corresponding to the content receiving
device of Williams:
1. determining proximity information,
2. evaluating the proximity information,
3. determining access eligibility, and
4. granting access.
Appellant argues Williams discloses that each of these steps is performed by
the content source device, not by the receiving device as claimed. App. Br.
9—11. Because it is dispositive of our decision, we address only the first step
of determining proximity information, hereinafter the “proximity
determination step.”
The Examiner finds Williams at paragraphs 11—18 and 28 teaches the
four steps, including the proximity determination step, are performed by the
content module within the electronic device, i.e., Williams’s receiving
device. Final Act. 5. Paragraphs 11 and 12 of Williams disclose system
functionalities relating to transmission without disclosing specifically where
4
Appeal 2017-003050
Application 13/410,981
the functionalities are provided. Paragraphs 13 and 14 disclose functional
units provided in each of the source and receiving devices:
1. Secure content manager (SCM): “In an embodiment of the
invention, each source and receiving device includes a secure
content manager (SCM) that uses existing cryptographic
methods to secure transmissions of content and content usage
rules.” Williamson.
2. Secure GPS Processor (SGP): “In an embodiment of the
invention, SGPs within source and receiving devices may
initiate and authenticate a secure communication session using
their unique identifiers and any suitable method of
authentication.” Williams 0 14.
Paragraphs 13 and 14 do not otherwise describe whether any specific portion
of the disclosed functionality is performed by the source or receiving device
(i.e., Appellant’s “electronic device”) including failing to disclose any
allocation of proximity functions between source and receiving device
SCMs and SGPs. Similarly, paragraphs 15 and 17 of Williams are silent
concerning where the disputed functionality corresponding to the proximity
determination step is provided.
Paragraph 16 of Williams does locate certain functionality as provided
by the source device but does not address the functionality of the disputed
proximity determination step: “The geographic location and other
parameters may be stored within a secure architecture of the source SCM.
The source SCM and SGP may combine the geographic data with other
parameter data to apply a more sophisticated content usage rule for the
receiving device.” Thus, to the extent geographic location teaches or
5
Appeal 2017-003050
Application 13/410,981
suggests proximity information, that information is disclosed as stored in the
source SCM with no mention of the receiving device’s SCM. Paragraph 18
of Williams discloses each receiving device (the “electronic device” of claim
1) as having or being connected to a locating device and another
configuration wherein “the source device may transmit content bound to
usage rights and a decryption key that may be shared with all the devices in
[a common] domain.” Again, there is no description of the receiving device
performing the disputed proximity determination step. Finally, paragraph
28, also cited by the Examiner for teaching the disputed limitation, discloses
“the receiving device requests access to specific digital content from the
source device . . . [which] may be directed toward a secure content manager
(SCM) within the source device.” A request to locate the receiving device
may then be forwarded by the SCM to “a triangulating geographic locating
device” only described as “known in the art” and which “may be integrated
in equipment with the SCM, or connected to it via a communication link.”
Thus, there is no explicit disclosure in the cited portions Williams of the
receiving device performing the disputed proximity determination step.
Appellant argues that rather than the receiving device performing the
disputed proximity determination step, Williams at paragraph 16 discloses
“the secure content manager (SCM) and SGP of the source device (as
opposed to the receiving device) may combine the geographic data
(including what it obtained from the received [device]) with other parameter
data to apply a content usage rule for the receiving device.” App. Br. 9-10.
Therefore, according to Appellant, “Williams does not teach or disclose that
the determining [of] the proximity information of the receiving device with
6
Appeal 2017-003050
Application 13/410,981
respect to the source device using the content access module is performed by
the content access module within the receiving device.” App. Br. 9.
We agree with Appellant. The portions of Williams cited by the
Examiner, although describing the claimed steps including the proximity
determination step, do not disclose that those steps are performed by the
content access module within the electronic device, i.e., within Williams’s
receiving device, as required by claim 1. Instead, from the portions of
Williams cited by the Examiner, the only embodiments described by
Williams have the sending device, not the receiving device, performing the
proximity determination step. Thus, the Examiner fails to provide sufficient
evidence or explanation to persuade us that Williams teaches that the
proximity determination step is performed by the content access module
within the electronic device (Williams’s receiving device). Furthermore,
given the record before us, the Examiner has provided insufficient
explanation to persuade us that having the receiving device perform the
proximity determination step would have been obvious in view of the
applied art in the absence of an explicit disclosure of that feature.
Accordingly, we do not sustain the rejection of claim 1 or the rejection
of independent claims 11 and 20 which include corresponding limitations
and, in connection with that limitation, are rejected on the same basis as
claim 1. Dependent claims 4—10, 14—19, and 21 stand with their respective
base claims.
We note, in an ex parte appeal, the Board “is basically a board of
review—we review . . . rejections made by patent examiners.” Ex parte
Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001). “The review authorized by
35 U.S.C. Section 134 is not a process whereby the examiner . . . invite[s]
7
Appeal 2017-003050
Application 13/410,981
the [B]oard to examine the application and resolve patentability in the first
instance.” Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999). Because
we are a board of review, and not a place of initial examination, we will not
engage in the de novo examination required to supplement the Examiner’s
findings in connection with whether it would have been obvious to provide
the required functionalities by the content access module within the
receiving device instead of at the sending device as taught by
Williams. Thus, we express no opinion as to whether independent claim 1
would be obvious over Williams and Hirsch if supported by additional
explanation or references. We leave any such further consideration to the
Examiner. Although the Board is authorized to reject claims under
37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects
not to do so. See Manual of Patent Examining Procedure (MPEP) § 1213.02
(9th ed., R-07.2015, Nov. 2015).
DECISION
We reverse the Examiner’s decision to reject claims 1, 4—11, and 14—
21 under 35 U.S.C. § 103(a).
REVERSED
8