Ex Parte Lao et al

Board of Patent Appeals and Interferences

Jul 6, 2010

10162210 (B.P.A.I. Jul. 6, 2010)

The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GUILLERMO LAO, XIN WANG,
THANH TA, and JOSEPH FUNG
____________

Appeal 2009-011610
Application 10/162,210
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-011610
Application 10/162,210
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STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1, 4-15, 18-21, 23-27, and 29-45 which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to systems for
controlling the distribution of items such as digital content. (Spec. [0002]).
Claim 1, reproduced below with some numbering in brackets added, is
representative of the subject matter of appeal.

1. A rights management system for managing use of items having
usage rights associated therewith, said system comprising:
[1] a first activation device defining a first trust zone and being
adapted to issue a first software package that enforces first usage
rights within the first trust zone,
wherein the first trust zone includes one or more user devices
associated therewith and which are activated by the first software
package for receiving items within the first trust zone;
[2] a second activation device defining a second trust zone and being
adapted to issue a second software package that enforces second usage
rights within the second trust zone,
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wherein the second trust zone includes one or more user devices
associated therewith and which are activated by the second software
package for receiving items within the second trust zone;
[3] at least one first license device associated with said first trust zone,
said first license device being adapted to generate a license associated
with said items and including the first usage rights specifying a
manner of use of the items, said license specifying one
or more trust zones in which said license is valid; and
at least one user device associated with said first trust zone, said user
device being adapted to receive said first software package, receive
said license associated with said items, and to use said items in
accordance with said license, wherein said items are digital content,
and said license is one of:
[4] an open license that specifies that said digital content is used in
accordance with the usage rights by user devices having said first
software package or said second software package, and
[5] a closed license that permits said digital content to be used in
accordance with the usage rights only by user devices having said first
software package.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Ginter US 2003/0105721 A1 Jun. 5, 2003

The following rejections are before us for review:
1. Claims 1, 4-15, 18-21, 23-27, and 29-45 are rejected under 35
U.S.C. § 102(e) as anticipated by Ginter.

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THE ISSUES
At issue is whether the Appellants have shown that the Examiner
erred in making the aforementioned rejections.
This issue turns on whether Ginter discloses the cited claim
limitations which the Appellants have argued are missing from each
respective independent claim 1, 29, 34, and 35.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1
FF1. Ginter has disclosed a system for secure transaction management and
electronic rights protection (Title). The invention in part relates to secure
chains of handling and control for information content [0004].
FF2. Ginter discloses the use of a virtual display environment (VDE) which
comprises a rights protection system [0011].
FF3. Ginter at [2331-2338] and Fig. 85 describes an embodiment which
includes two separate VDE content containers (300(A) and 300(B)) which
carry control information specifying usage rights. This section does not
specifically disclose that each VDE container can issue a software package
that is used to enforce rights in each VDE zone.
FF4. Ginter at [2341] and Fig. 86 describes a separate embodiment where a
creator 102 may employ one or more software programs to place
unencrypted content into protected form. In addition creator 102 may

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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produce usage permissions as an aspect to control content. Ginter at this
section only discloses the use of software programs employed at the single
creator location 102, not at two activation devices.
FF5. Ginter at [0285-0286] discloses the use of secure processing units
(SPU’s) that must be present in each user’s computer, or other electronic
appliance, or network. It is not disclosed at [0285-0286] that the SPU’s are
issued by the VDE content containers.
FF6. Ginter at Figs. 85-86 and [0059-0061, 0140, 0144, 0285-0286, 2011,
2331-2338, and 2341] does not disclose both a first and a second activation
device which each can issue a separate software package to enforce usage
rights in a respective first or second trust zone.
FF7. Ginter at [2121] discloses using the VDE to construct mixed models in
which a distributor is restricted to controlling certain rights of subsequent
users and is allowed to control other rights. VDE models for certain levels
will be controlled for example by a clearinghouse providing one or more
rights to certain value chain participants.
FF8. Ginter at Figs. 85-86 and [0137, 1160, 1182, 1999, 2121, 2175, 2186,
2187, 2312] does not disclose that the license can only be used by user
device that has a first VDE issued software package or a second VDE issued
software package.
FF9. Ginter at Figs. 79-83, 85-86 and [2288-2289, 2309, 2315, 2331-2332,
2341] does not disclose a trust zone that includes one or more user devices
which are activated by a first software package for receiving the protected
item with the trust zone.
FF10. The Appellants Specification at [0038] states that activation servers
210 and 250 provide unique key pairs as well as other elements in a software
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package which is downloaded during an activation procedure by respective
clients in trust zones. The Specification at [0048] states that logic in the
software package can accept or reject a license depending on the trust zone
from which it issued.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.

ANALYSIS
Claims 1, 4-15, 18-21, 23-27, and 29-33
The Appellants argue that the rejection of claim 1 is improper because
Ginter does not teach multiple activation devices issuing independent
software packages and open and closed licenses as recited in the claims
(Supp. Br. 11).
In contrast the Examiner has determined that Ginter discloses first and
second activation devices which can each issue a respective first and second
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software package at Fig. 85-86 and [0059-0061, 0140, 0144, 0285-0286,
2011, 2331, 2332, and 2341] (Ans. 3-4). The Examiner has also determined
that the claim limitations drawn to the open and closed licenses is shown at
Figs. 85-86 and [0137, 1160, 1182, 1999, 2121, 2175, 2186, 2187, 2312]
(Ans. 3-4 and 15).
We agree with the Appellants. Claim 1 requires in part claim
limitations [1], [2], [4], and [5] which require:
[1] a first activation device defining a first trust zone and being
adapted to issue a first software package that enforces first usage
rights within the first trust zone,
[2] a second activation device defining a second trust zone and being
adapted to issue a second software package that enforces second
usage rights within the second trust zone,
[4] an open license that specifies that said digital content is used in
accordance with the usage rights by user devices having said first
software package or said second software package, and
[5] a closed license that permits said digital content to be used in
accordance with the usage rights only by user devices having said first
software package.
Thus the claim requires both a first and a second activation device
which each can issue a separate software package to enforce usage rights in
that respective first or second trust zone. The claim also requires an open
license can only be used by user device has the first software package or the
second software package.
Turning first to the example in Ginter cited by the Examiner at Fig.
85, the cited example does disclose that each VDE container does include
certain usage rights for the organization (FF3). However the sections of
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Ginter cited by the Examiner do not specifically disclose that each VDE
container can issue a software package that is used to enforce rights in each
VDE zone (FF3). Turning next to the example in Ginter cited by the
Examiner at Fig. 86, Ginter does disclose in this example that a creator 102
may employ one or more VDE subsystems to place content in protected
form (FF4). Ginter at this section only discloses the use of software
programs employed at the single creator location 102, not at two activation
devices (FF4). Ginter at Fig. 85-86 and [0059-0061, 0140, 0144, 0285-
0286, 2011, 2331-2338, and 2341] does not disclose both a first and a
second activation device which each can issue a separate software package
to enforce usage rights in a respective first or second trust zone (FF6).
Further, Ginter at Figs. 85-86 and [0137, 1160, 1182, 1999, 2121, 2175,
2186, 2187, 2312] does not disclose that the license can only be used by user
device that has the first software package or the second software package
(FF8) which has been issued by a VDE as claimed.
For these reasons, the rejection of claim 1 and its dependent claims is
not sustained. Claim 29 contains at least one similar limitation to those
discussed above and the rejection of this claims and its dependent claims is
not sustained for these same reasons.

Claims 34-45
With regards to claim 34 the Appellants have argued that Ginter does
not disclose “a trust zone including one or more user devices associated
therewith and which are activated by a software package for receiving the
protected item within the trust zone” (Supp. Br. 11).
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The Examiner in contrast has asserted that this claim limitation is
shown by Ginter at Figs. 79-83, 85-86 and [2288-2289, 2309, 2315, 2331-
2332, 2341] (Ans. 10).
We agree with the Appellants. Claim 34 includes a specific
limitation which requires that the “trust zone includes one or more user
devices…which are activated by a first software package for receiving the
protected item with the trust zone”. The Appellants Specification has made
a distinction between a software package and basic key pairs (FF10). Ginter
at the portions to which the Examiner has cited to does not disclose a trust
zone that includes one or more user devices which are activated by a first
software package for receiving the protected item with the trust zone (FF9).
For this reason, the rejection of claim 34 is not sustained. Claim 35 contains
a similar limitation to that addressed for claim 34 above. For the same
reasons given above, the rejection of claim 35 and its dependent claims is
also not sustained.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1, 4-15, 18-21, 23-27, and 29-45 under 35 U.S.C. § 102(e)
as anticipated by Ginter

DECISION
Examiner’s rejection of claims 1, 4-15, 18-21, 23-27, and 29-45 is
reversed.
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REVERSED

MP

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