Ex Parte Kyojima et al

Board of Patent Appeals and Interferences

Aug 28, 2006

09678031 (B.P.A.I. Aug. 28, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MASAKI KYOJIMA and KIL-HO SHIN
__________

Appeal No. 2006-1416
Application No. 09/678,031
___________

ON BRIEF
___________

Before FRANKFORT, OWENS and LEVY, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal is from a rejection of claims 1-48, which are
all of the pending claims.
THE INVENTION
The appellants claim methods and systems pertaining to the
issuance of an electronic license. Claim 1 is illustrative:

1. A license-issuing method for issuing an electronic
license for certifying that usage of digital contents is
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permitted to a specific user, the digital contents being provided
by at least one of a provider and a seller, the method
comprising:

generating information for verification from a license-
issuing center, the license-issuing center being independent from
the at least one of the provider and the seller, the information
for verification required to verify legitimacy of an electronic
license;

inputting information to specify the information for
verification;

generating the electronic license from the license-issuing
center, the electronic license able to be verified by the
information for the verification specified by the input
information to specify the information for verification; and

outputting the generated electronic license.
THE REFERENCE
Ginter et al. (Ginter) 5,892,900 Apr. 6, 1999
THE REJECTION
Claims 1-48 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ginter.
OPINION
The rejection is affirmed as to claims 1-3, 5-12, 14, 15 and
35-38, and reversed as to claims 4, 13, 16-34 and 39-48.

The reference
Ginter discloses a virtual distribution environment (VDE)
that secures, administers and audits the use of electronic
information (col. 2, lines 20-23). The VDE includes an
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information utility (200) that comprises a permissioning
agent (200f) that “may distribute ‘rules and controls’ granting
usage or distribution permissions based on a profile of a
consumer’s credit worthiness, for example” (col. 55, lines 53-
56). The VDE also includes a content creator (102) and a rights
distributor (106) that may be the same or different people
(col. 56, lines 47-48). The content creator may specify rules
and controls for distributing the content (col. 56, lines 7-8).
The content creator sends the rules and controls to the rights
distributor which may generate content usage rules and controls
that are consistent with those of the content creator (col. 56,
lines 12-24).

Claims 1 and 2
The appellants argue that Ginter does not mention a license
issuing center (brief, page 19). A license is a “permission to
act”.1 The appellants do not rely upon any more limited
definition of “license”. Hence, Ginter’s permissioning agent,
which distributes rules and controls granting usage or
distribution permissions (col. 55, lines 53-56), is a “licensing
issuing center” as that term is used by the appellants.

1 Webster’s New Collegiate Dictionary 662 (G. & C. Merriam 1973).

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The appellants argue that Ginter does not disclose a
licensing issuing center that is independent of at least one of a
content provider and a content seller (brief, page 19). Ginter
discloses that the participants in the information utility, one
of which is the permissioning agent, each can be an independent
organization or business (col. 55, lines 37-38), and that the
information utility can be a central entity to which other
entities including an author (which corresponds to the
appellants’ provider) and a publishing house (which corresponds
to the appellants’ seller) are electrically connected (col. 54,
lines 63-64; figure 1). The disclosure that the permissioning
agent can be an independent organization or business and the
illustration of the permissioning agent as electrically connected
to separate provider and seller entities would have fairly
suggested, to one of ordinary skill in the art, a permissioning
agent that is independent of the provider and seller.
The appellants argue that Ginter’s disclosure that each
information utility participant can be an independent
organization or business merely identifies the participants as
being independent from each other, and does not indicate that
they are independent from the provider or seller (reply brief,
page 4). Ginter’s disclosure that the participants are
independent does not limit that independence to independence
among the participants. Furthermore, Ginter’s figure 1 indicates
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that the participants, one of which is the permissioning agent,
are independent from the author (provider) and publishing house
(seller).2
For the above reasons we are not convinced of reversible
error in the examiner’s rejection of claims 1 and 2, and their
dependent claims 3, 8, 35 and 36 that are not separately argued
by the appellants (brief, pages 25-27).
Claims 5-7
Claims 5 and 6 require a license issuance history memory
unit and a content provider’s issuance history preparation unit.
Claim 7 requires a verification information issuance history
memory unit for storing a history of issuance of information for
verification, a verification information issuance history
preparation unit which receives information to specify a
recipient of information for verification and extracts the
issuance history, and a verification information issuance history
output unit for outputting the issuance history.
The examiner argues that Ginter discloses those claim
requirements at column 20, line 42 and column 24, lines 24-53

2 The appellants incorrectly argue that Ginter’s disclosure that the video
production studio (204) may provide rules and controls for a video and may,
through the information utility, make the video available in protected form to
consumers (col. 54, lines 39-44) indicates that the information utility is not
independent from the video production studio (reply brief, page 4). The rules
and controls provided by the video production studio are in addition to those
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(answer, pages 8-9). Column 20, lines 39-43 discloses: “This
same provider might also charge fees based on the total number of
different properties licensed from them by the user and a
metering history of their licensing of properties might be
required to maintain this information.” Column 24, lines 24-53
discloses the use of bitmap meters to record usage and/or
purchase of information.
Regarding claim 5 the appellants argue that Ginter does not
disclose means for obtaining a metering history (brief, page 25).
The appellants apparently are referring to their content
provider’s issuance history preparing unit, which is the
limitation argued with respect to claim 6. See id. Ginter’s
system necessarily requires a unit for preparing the metering
history disclosed at column 20, lines 41-42. Hence, we are not
convinced of reversible error in the examiner’s rejection of
claims 5 and 6.
As for claim 7, the appellants assert that the units recited
in that claim are not disclosed in the portions of Ginter relied
upon by the examiner (brief, page 25). The metering history
disclosed by Ginter at column 20, lines 39-43 necessarily
requires units for storing, extracting and outputting metering
history information. Any difference between the metering history

provided by the information utility and, therefore, do not make the
information utility dependent upon the video production studio.
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information in the appellants’ claim 7 and that of Ginter does
not patentably distinguish the claim over Ginter because the
information is nonfunctional descriptive material, i.e., it does
not have any new and unobvious functional relationship with the
substrate on which it is stored. See In re Gulack, 703 F.2d
1381, 1386, 217 USPQ 401, 404 (Fed. Cir. 1983). Consequently, we
are not convinced of reversible error in the examiner’s rejection
of claim 7.
Claims 9-15
Regarding claims 9 and 10, the appellants argue that Ginter
does not disclose “not only receiving a first license request,
but also preparing a second license request requesting issuance
of the electronic license requested in the received first license
request, and outputting the second license request to the
independent license-issuing center” (brief, page 20).
The request from Ginter’s customer to the seller corresponds
to the appellants’ first license request. The request by the
seller to the permissioning agent for permission to provide the
content requested in the first license request corresponds to the
appellants’ second license request requesting the issuance of the
license requested in the first license request.
We therefore are not convinced of reversible error in the
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examiner’ rejection of claims 9 and 10, and their dependent
claims 11, 12, 14, 15, 37 and 38 that are not separately argued
by the appellants (brief, page 26).
The appellants argue that Ginter does not disclose the
agreement storage means in claim 13 (brief, page 26). The
examiner argues: “Ginter further discloses that negotiations,
contracts, and agreements governing licensing, distribution, and
use of content are all possible with his system, incorporated
into the data ‘objects’ transmitted among participants of his
‘chain of handling and control’ (see above citations)” (answer,
page 10). The “above citations” referred to by the examiner
cover many columns and figures in Ginter. The examiner has not
pointed with any degree of particularity to any part of Ginter
and explained how that disclosure would have fairly suggested, to
one of ordinary skill in the art, the agreement storage means
required by the appellants’ claim 13.
Consequently, we conclude that the examiner has not
established a prima facie case of obviousness of the invention
claimed in the appellants’ claim 13.
Claims 4 and 16-19
Claims 4 and 16-19 require an intermediator of the issuance
of an electronic license.
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The examiner does not point to any disclosure in Ginter of
such an intermediator but, rather, cites Ginter’s abstract, eight
figures and associated text, and approximately twenty other
columns (answer, page 5). The examiner’s citation of numerous
columns and figures in Ginter without explaining how the relied-
upon portions disclose, or would have fairly suggested to one of
ordinary skill in the art, Ginter’s intermediator, is not
sufficient for establishing a prima facie case of obviousness of
the inventions claimed in the appellants’ claims 4 and 16-19.

Claims 20-34 and 39-48
Regarding claims 20-34 and 39-48 the examiner states what
the claims recite and cites at least seventeen columns of Ginter
(answer, pages 5-7 and 12). The examiner’ citation to a large
portion of Ginter without pointing out with reasonable
particularity the relied-upon disclosures and explaining how they
disclose, or would have fairly suggested, to one of ordinary
skill in the art, the limitations in the appellants’ claims, is
not sufficient for establishing a prima facie case of
obviousness.
DECISION
The rejection of claims 1-48 under 35 U.S.C. § 103 over
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Ginter is affirmed as to claims 1-3, 5-12, 14, 15 and 35-38, and
reversed as to claims 4, 13, 16-34 and 39-48.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
) BOARD OF PATENT
) APPEALS
) AND
TERRY J. OWENS ) INTERFERENCES
Administrative Patent Judge )
)
)
)
)
STUART S. LEVY )
Administrative Patent Judge )

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P.O. Box 19928
Alexandria, VA 22320

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