Ex Parte Jang et al

Patent Trial and Appeal Board

Feb 27, 2018

11999176 (P.T.A.B. Feb. 27, 2018)

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.
11/999,176 12/03/2007 Jae-Seok Jang 804.0009 8287
76277 7590 03/01/2018
IP LEGAL SERVICES, LLC
P.O. Box 651325
Sterling, VA 20165
EXAMINER
ZELAS KIEWICZ, CHRYSTINA E
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
03/01/2018 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):
email @ iplsllc. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAE-SEOK JANG, SEOK-BIN IM, and HAN-UP BAE
Appeal 2016-008645
Application 11/999,176
Technology Center 3600
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the
Examiner’s decision to reject claims 1,3,4, 13, 15-17, 19, 25, and 27-30,
which constitute all the claims pending in this application. We have
jurisdiction under 35 U.S.C. § 6(b). Claims 2, 5-12, 14, 18, 20-24, and 26
were cancelled.
We affirm.
1 Appellants identify the real party of interest as KT Corporation.
App. Br. 3.
Appeal 2016-008645
Application 11/999,176
STATEMENT OF THE CASE
The Invention
Appellants’ disclosed invention “relates to ... a method and apparatus
for providing and processing [a] digital contents package or period-based
flat rate service digital contents using DRM [digital rights management].”
Spec. ^ 2. Claim 1, which is illustrative, reads as follows:
1. A method for providing digital rights management
(DRM)-based content package from a DRM-based content
providing server to a user terminal comprising:
receiving from a user terminal a request for a DRM-
based content package in a DRM-based content providing
server, wherein the DRM-based content package comprises a
plurality of individual contents;
detecting within the content providing server the
individual contents comprising the requested content package;
generating a single content package right object to be
commonly applied to all of the detected individual contents in
the requested content package;
encoding each of the individual contents using the single
content package right object;
generating content transmitting information containing
the encoded individual contents and the single content package
right object, wherein the single content package right object
includes key information to be commonly used for decoding the
encoded individual contents contained in the content
transmitting information, and a usable period of the content
package;
transmitting the content transmitting information to the
requesting user terminal; and
renewing an expiration date of the single content package
right object included in the content transmitting information
and transmitting the renewed expiration date to the user
2
Appeal 2016-008645
Application 11/999,176
terminal when a right object of the individual contents expires,
the individual contents being requested by the user.
The Rejections2
Claims 1, 3, 4, 13, 15-17, 19, 25, and 27-30 stand rejected under
35 U.S.C. § 101 as being directed to ineligible subject matter. See Final Act.
4
Claims 1, 3, 4, 13, 15-17, 19, 25, and 27-30 stand rejected under
35 U.S.C. § 103(a)3 as being unpatentable over Stefik et al. (US
2002/0128856 Al, Sept. 12, 2002 (“Stefik”)) and Kawamoto et al. (US
2004/0210762 Al, Oct. 21, 2004 (“Kawamoto”)). See Final Act. 5-12.
The Record
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed Jan. 22, 2016; “Reply Br.” filed Sept. 15. 2016) for the positions
of Appellants; the Advisory Action (“Adv. Act.” mailed Apr. 13, 2016), the
Final Office Action (“Final Act.” mailed Apr. 29, 2015), and the Examiner’s
Answer (“Ans.” mailed July 15, 2016) for the reasoning, findings, and
conclusions of the Examiner; and the Specification (“Spec.” filed Dec. 3,
2007). Only those arguments actually made by Appellants have been
considered in this decision. Arguments that Appellants did not make in the
2 Claims 13, 15-17, 19, and 27-30 had been rejected under 35 U.S.C. § 112,
second paragraph as being indefinite. Final Act. 3. The Examiner has
withdrawn the rejection of these claims under 35 U.S.C. § 112, second
pargraph. Ans. 2; Adv. Act. 1.
3 All prior art rejections are under the provisions of 35 U.S.C. in effect
before the effective date of the Leahy-Smith America Invents Act of 2011
(“pre-AIA”). Final Act 2.
3
Appeal 2016-008645
Application 11/999,176
Briefs have not been considered and are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv) (2015).
ISSUES
The issues presented by Appellants’ arguments are as follows:
Does the Examiner err in concluding claim 1 is directed to an abstract
idea under the first step of the analysis set forth in Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012) and Alice
Corp. Party Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014)?4
Does the Examiner err in finding the combination of Stefik and
Kawamoto teaches or suggests “generating a single content package right
object to be commonly applied to all of the detected individual contents in
the requested content package” (hereinafter the “argued limitation”), as
recited in claim 1?
ANALYSIS
Rejection under 35 U.S.C. § 101
The Examiner finds “[t]he claims are directed to an abstract idea of
providing a digital rights management (DRM) package, which is a certain
method of organizing human activity and an idea of itself.” Ans. 3. The
Examiner further finds the claims “do not add a meaningful limitation
because they can be performed by a human mind and/or with pen and paper
(generating a right object, encoding contents with key information, renewing
4 Appellants’ arguments present additional issues under § 101. However,
because the identified issue is dispositive of the appeal under § 101, we do
not reach the additional issues under § 101.
4
Appeal 2016-008645
Application 11/999,176
the expiration dat[e]); and relate to managing a transaction between people
(i.e. user and server) and sales activity.” Id. at 5.
Appellants contend the claims do not correspond to the typical DRM
technology in which “a right object is individually generated per digital
content, and therefore a plurality of right objects are generated, transmitted
(to a user terminal), and managed.” App. Br. 11 (emphases omitted); Reply
Br. 5. According to Appellants, contrary to the typical DRM technology,
and “in the present claims, . . . only a single content package right object is
generated for the plurality of contents, is commonly used for
encoding/decoding each of the plurality of contents, and is transmitted to the
user terminal.” Reply Br. 5 (emphases omitted). Appellants conclude “each
element or step in the present claims is not a certain method of organizing
human activity and an idea of itself. In other words, it is believed that the
present claims are not directed to an abstract idea, and therefore qualify as
eligible subject matter.” App. Br. 12 (emphases omitted). We agree.
To be eligible under 35 U.S.C. § 101, the subject matter of an
invention must be a “new and useful process, machine, manufacture, or
composition of matter, or [a] new and useful improvement thereof.”
35 U.S.C. § 101. The Supreme Court has held there are implicit exceptions
to the categories of patentable subject matter identified in § 101, including
(1) laws of nature, (2) natural phenomena, and (3) abstract ideas. Alice, 134
S. Ct. at 2355. Further, the Court has “set forth a framework for
distinguishing patents that claim [1] laws of nature, [2] natural phenomena,
and [3] abstract ideas from those that claim patent-eligible applications of
those concepts.” Id. (brackets added) (citing Mayo, 132 S. Ct. 1289). The
evaluation follows the two-part analysis set forth in Mayo: 1) determine
5
Appeal 2016-008645
Application 11/999,176
whether the claim is directed to an abstract idea; and 2) if the claim is
directed to an abstract idea, determine whether any element, or combination
of elements, in the claim is sufficient to ensure that the claim amounts to
significantly more than the abstract idea itself. See Alice, 134 S. Ct. at 2350.
Claim 1 is directed to a process, which is one of the four statutory
classes. Following the Court’s guidance, we turn to the first step of the
Mayo/Alice analysis to determine if the claim is directed to one of the
judicial exceptions, i.e., an abstract idea. According to Alice step one, “[w]e
must first determine whether the claims at issue are directed to a patent-
ineligible concept,” such as an abstract idea. Alice, 134 S. Ct. at 2355
(emphasis added). “[T]he ‘directed to’ inquiry applies a stage-one filter to
claims, considered in light of the specification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)).
The Specification discusses the problem to be solved by the
invention—allowing a user to conveniently access a content package’s
digital contents using DRM technology. Spec. ^ 8. According to the
Specification, the current DRM technology faces obstacles due to assigning
one right object for each digital content of a content package having many
digital contents—the load of content providing servers is increased, the
memory efficiency of a user terminal is deteriorated, and the inconvenience
of having to change all right objects if a user intends to extend their periods.
Id. 36-40. According to the Specification, the inventors solved the
problem by generating only a single right object representing all of the
6
Appeal 2016-008645
Application 11/999,176
packaged contents of a content package. Id. 55. By generating a single
right object representing all of the packaged contents, memory use efficiency
can be improved. Id. ^ 82, 140.
Here, claim 1 recites three distinct steps: (1) receiving from a user
terminal a request for a DRM-based content package comprising individual
contents; (2) generating a single content package right object to commonly
encode each of the individual contents; and (3) transmitting the encoded
individual contents and the single content package right object including key
information for purposes of decoding.
Our reviewing court addressed improvements to computer-related
technology:
Software can make non-abstract improvements to computer
technology just as hardware improvements can, and sometimes
the improvements can be accomplished through either route. We
thus see no reason to conclude that all claims directed to
improvements in computer-related technology, including those
directed to software, are abstract and necessarily analyzed at the
second step of Alice, nor do we believe that Alice so directs.
Therefore, we find it relevant to ask whether the claims are
directed to an improvement to computer functionality versus
being directed to an abstract idea, even at the first step of the
Alice analysis.
Enfish, 822 F.3d at 1335.
At the outset, we note in passing “[encryption, in general, represents
a basic building block of human ingenuity that has been used for hundreds,
if not thousands, of years. . . . Specifically, encryption, in its simplest form,
could be performed with pencil and paper.” Fidelity Nat 7 Info. Servs., Inc.
v. DataTreasury Corp., 2015 WL 1967328, at *7 (PTAB 2015), affd, 2016
WL 5939431 (Fed. Cir. 2016).
7
Appeal 2016-008645
Application 11/999,176
But here, in light of the Specification discussed above, we agree with
Appellants that claim 1 is not directed to an abstract idea. That is, we find
claim 1 at issue here bears a substantial similarity to claim 1 of U.S. Patent
No. 6,154,844 (“the ’844 patent”) that our reviewing court determined patent
eligible. See Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed.
Cir. 2018). Similar to the functionality of the ’844 patent’s claim 1 in
Finjan, Appellants’ claim 1 involves receiving a user’s DRM-based content
package request (analogous to the ’844 patent’s Downloadable), generating
a single content package right object (analogous to the ’844 patent’s first
Downloadable security profile) that identifies the requested content
package’s individual contents, and linking the single content package right
object to the user’s DRM-based content package request. As discussed
above, claim l’s operation is distinguished from known DRM technology
that is limited to assigning “a single content package right object to be
commonly applied to all of the detected individual contents in the requested
content package” (claim 1). As such, “the focus of [claim 1] is on the
specific asserted improvement in computer capabilities . . . [rather than] on a
process that qualifies as an ‘abstract idea’ for which computers are invoked
merely as a tool.” Enfish, 822 F.3d at 1335-36. That is, claim 1 employs a
new kind of content package right object that enables the computer to
employ DRM technology to do things it could not do before. Thus,
Appellants’ claims are directed to a non-abstract improvement in computer
functionality, rather than a method of organizing human activity or an idea
of itself.
“Because we find the claims are not directed to an abstract idea, we
need not proceed to step two.” Thales Visionix Inc. v. United States, 850
8
Appeal 2016-008645
Application 11/999,176
F.3d 1343, 1348 (Fed. Cir. 2017) (citing Alice, 134 S. Ct. at 2355; Enfish,
822 F.3d at 1339).
Accordingly, we do not sustain the rejection under 35 U.S.C. § 101 of
(1) claim 1; (2) independent claims 4, 13, and 16, each of which includes
limitations substantially similar to the limitations discussed supra (compare
App. Br. 17 (Claims App’x), with id. at 17-19) and was rejected on
substantially the same basis as claim 1 (see Final Act. 4); and (3) claims 3,
15, 17, 19, 25, and 27-30, which variously depend from claims 1, 4, 13, and
16.
Rejection under 35 U.S.C. § 103
The Examiner finds Stefik, when combined with Kawamoto, teaches
the argued limitation of claim 1. Final Act. 5-6; Ans. 7-8. According to the
Examiner, “under the broadest reasonable interpretation, Stefik discloses [a
single content package right object.]” Ans. 7.
Specifically, the Examiner finds
[ujnder the broadest reasonable interpretation, the claim
limitation requires generating a single right to be applied to all
the contents. Having multiple d-blocks with corresponding right
portions does not preclude a single right from being applied to
all the d-blocks. Stefik discloses a single right (usage rights, see
[0062]) to be applied to all the contents (the usage rights will be
the same for an entire digital work, see [0062]). In other words,
all the usage rights for the contents of a package are the same
(i.e. a usage right has been applied to all the contents, e.g. print,
view, play).
Ans. 7-8.
Appellants contend that “[i]n light of the claim language and the
original [Specification, it is interpreted that in the present claims, only a
9
Appeal 2016-008645
Application 11/999,176
single content package right object is generated, used (to encode/decode),
and transmitted for a plurality of contents.” Reply Br. 8 (citing Spec. ^ 70,
Fig. 6). Appellants further contend that “in the present claims, a DRM-
based content providing server does not generate ‘a plurality of same right
objects’ to be individually applied to each of a plurality of different
contents, and therefore does not transmit the plurality of same right objects
to a user terminal.” Id.
Appellants continue as follows:
Steflk explicitly discloses that every component part (descriptor
block, for example d-blocks 1102-1104) has the same
structure, and therefore each d-block has its own right portion
although rights for a plurality of d-blocks are the same [as] each
other. Therefore, in view of the specification and drawings of
Steflk, it is believed that the expression “the usase rights may be
the same for an entire digital work” in paragraph [0062] merely
means that rights included in a plurality of right portions may be
the same as each other. That is, it is believed that the expression
“the usage rights may be the same ...” in [0062] cannot be
interpreted as the expression “only a single right portion is
generated and included for an entire digital work.”
Id. at 9 (alterations in original).
To resolve the question of patentability under § 103, we begin by
construing the argued limitation of claim 1. Claim construction is an issue
of law that is reviewed de novo. Cordis Corp. v. Boston Scientific Corp.,
561 F.3d 1319, 1331 (Fed. Cir. 2009). We give claims their broadest
reasonable interpretation consistent with the Specification. In re Am. Acad.
ofSci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Although claims
are interpreted in light of the Specification, “limitations are not to be read
into the claims from the [Specification.” In re Van Geuns, 988 F.2d 1181,
10
Appeal 2016-008645
Application 11/999,176
1184 (Fed. Cir. 1993). Accordingly, arguments must be commensurate in
scope with the actual claim language. In re Self, 671 F.2d 1344, 1348
(CCPA 1982).
Appellants and the Examiner do not appear to disagree as to the
meaning of a “right object.” Here, the argued limitation of claim 1 recites
“generating a single content package right object to be commonly applied to
all of the detected individual contents in the requested content package.”
App. Br. 15 (Claims App’x) (emphasis added). The plain meaning of the
term “single” is “one only.” Merriam-Webster’s Collegiate
Dictionary 1095 (10th ed. 1999). We therefore agree with Appellants that
claim 1 requires one and only one single content package right object be
commonly applied to all of the detected individual contents within a content
package. App. Br. 8-9; Reply Br. 5-6.
However, although the argued limitation, by its plain language,
precludes the existence of right objects other than the single content package
right object that are commonly applied to all individual contents, it does not
preclude the existence of right objects other than the single content package
right object that are applied to individual contents. Appellants attempt to
support their contention by pointing to an embodiment illustrated by Figure
6 of the present application in which only one package right object exists to
represent all of the individual contents contained in the package content. See
App. Br. 13; Reply Br. 8 (citing Spec. ^ 70); see also Spec. ^ 80 (“As
described above, according to one embodiment of the present invention,
only one package right object is used for all of the contents contained in the
content package.”). However, excluding the existence of other right objects
is not recited in claim 1, and we decline to import a negative limitation into
11
Appeal 2016-008645
Application 11/999,176
the claim inferred from an embodiment of the Specification. See Van
Geuns, 988 F.2d at 1184. Therefore, we conclude that the broadest
reasonable interpretation of claim 1 does not preclude the existence of other
right objects of each individual content when only one generated content
package right object is commonly applied to all the individual contents.
The Examiner finds that Stefik teaches the argued limitation. See
Ans. 7-8 (citing Stefik 62); see also Final Act. 5-6 (additionally citing
Stefik 53-54). We agree with the Examiner’s findings and adopt them as
our own. Stefik is generally directed to a composite digital work having
usage rights. Stefik, Abstract. Stefik’s usage rights define the manner in
which the composite digital work can be used and distributed. Id. 38.
Stefik’s composite digital work is composed of a hierarchy of component
parts. Id. 51, 53-54, Figs. 5-6. Each of Stefik’s component parts is
represented by a descriptor block (d-block) that includes the component
part’s separate usage rights. Id. 54, Fig. 7. Examples of Stefik’s usage
rights include the right to print or view the composite work or component
part. Id. 66-67, Fig. 11.
Stefik discloses that “[i]f the usage rights will be the same for an
entire digital work, they could be associated when the digital work is
processed for deposit in the digital work server.” Id. 62. Thus, Stefik
generates a set of usage rights to be commonly applied to all component
parts (the claimed “detected individual contents”) in the entire digital work
(the claimed “requested content package”). Because Stefik does not disclose
any other set of usage rights to be commonly applied to all component parts
in the digital work, Stefik’s set of usage rights, then, at least suggests being
only one generated content package right object (the claimed “single content
12
Appeal 2016-008645
Application 11/999,176
package right object”) to be commonly applied to all component parts in the
entire digital work.
Appellants’ contentions regarding Kawamoto’s alleged shortcomings
with respect to the argued limitation (App. Br. 14; Reply Br. 9-1 l)and other
contentions pertaining to the argued limitation (Reply Br. 11), are unavailing
in light of our finding that Stefik at least suggests the argued limitation, as
discussed above.
Accordingly , we sustain the rejection under 35 U.S.C. § 103(a) of (1)
claim 1; (2) independent claims 4, 13, and 16, which are argued together
with (see App. Br. 12-15), or relying on the arguments for (see id. at 15),
claim 1; and (3) claims 3, 15, 17, 19, 25, and 27-30, which variously
depend, directly or indirectly, from claims 1,4, 13, and 16 and were not
separately argued with particularity (see id.).
DECISION
The Examiner’s decision to reject claims 1, 3, 4, 13, 15-17, 19, 25,
and 27-30 under 35 U.S.C. § 101 is reversed.
The Examiner’s decision to reject claims 1, 3, 4, 13, 15-17, 19, 25,
and 27-30 under § 103(a) 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.
§ 41.50(f).
AFFIRMED
13