Ex Parte Lebegue et al

Patent Trial and Appeal Board

Jun 19, 2015

11983928 (P.T.A.B. Jun. 19, 2015)

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.
11/983,928 11/13/2007 Xavier Lebegue PF060159 6892
24336 7590 06/19/2015
TUTUNJIAN & BITETTO, P.C.
425 Broadhollow Road, Suite 302
Melville, NY 11747
EXAMINER
CHEUNG, CALVIN K
ART UNIT PAPER NUMBER
3668
MAIL DATE DELIVERY MODE
06/19/2015 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte XAVIER LEBEGUE and TEDDY FLORENT
__________

Appeal 2012-003062
Application 11/983,9281
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Xavier Lebegue, et al. (Appellants) seek our review under 35 U.S.C. §
134 (2002) of the final rejection of claims 1–10. We have jurisdiction under
35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.2

1 The Appellants identify Thomson Licensing as the real party in interest.
App. Br. 3.
Appeal 2012-003062
Application 11/983,928

2
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for providing to a device access rights to
access rights protected digital content, the method comprising
the steps of:
receiving first by the device a file comprising the access
rights protected digital content and further comprising playable
instructions indicating how to procure access rights to the
access rights protected digital content;
after receiving, playing the playable instructions to a
user;
requesting, after playing the playable instructions, from a
content owner access rights to the access rights protected digital
content; and
receiving the access rights.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Edwards
Fransdonk
Malik

US 2002/0073143 A1
US 2005/0066353 A1
US 2007/0067301 A1
June 13, 2002
Mar. 24, 2005
Mar. 22, 2007

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Aug. 26, 2011) and Reply Brief (“Reply Br.,” filed Dec. 6, 2011),
and the Examiner’s Answer (“Ans.,” mailed Oct. 6, 2011).
Appeal 2012-003062
Application 11/983,928

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The following rejections are before us for review:
1. Claims 1–6 and 8–10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Malik and Fransdonk.
2. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Malik, Fransdonk, and Edwards.

ISSUES
Did the Examiner err in rejecting claims 1–6 and 8–10 under 35
U.S.C. § 103(a) as being unpatentable over Malik and Fransdonk?
Did the Examiner err in rejecting claim 7 under 35 U.S.C. § 103(a) as
being unpatentable over Malik, Fransdonk, and Edwards?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

ANALYSIS
The rejection of claims 1–6 and 8–10 under 35 U.S.C. § 103(a) as being
unpatentable over Malik and Fransdonk.
The Examiner’s position is that Malik discloses all the claim 1
limitations but for “receiving the access rights” (claim 1) for which
Fransdonk is relied upon. Ans. 5. According to the Examiner,
[i]t would have been obvious by one of ordinary skill in the art
at the time of the invention to modify the playable instructions
indicating how to procure access rights by Malik by
incorporating the receiving of access rights taught by
Fransdonk. Since the claimed invention is merely a
combination of old elements, and in the combination each
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Application 11/983,928

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element merely would have performed the same function as it
did separately, and one of ordinary skill in the art would have
recognized that the results of the combination were predictable.
Id.
Among the claim 1 limitations the Examiner found to be disclosed in
Malik is
receiving first by the device a file comprising the access rights
protected digital content and further comprising playable
instructions indicating how to procure access rights to the
access rights protected digital content.
One of ordinary skill in the art plainly reading this limitation would
understand it to require a file containing at least two elements: (a) “the
access rights protected digital content” and (b) “playable instructions
indicating how to procure access rights to the access rights protected digital
content.” The claim is directed to “providing to a device access rights to
access rights protected digital content.” This is accomplished, per the claim,
by (1) receiving said file, (2) after receiving said file, playing (b), (3) after
playing (b), requesting from a content owner access rights to (a), and (4)
receiving the access rights.
According to the Examiner, said file is disclosed in Malik at “[Figure]
10, Element 1010 and ¶ 46, 55-56” (Ans. 5).
The Appellants disagree.
There is, however, nothing in Malik that even remotely
suggests that the offer is comprised in the file that further
comprises the content. In other words, Malik's computer
application detects the expiration of the time trial based on
information that may be comprised in the content file, but the
offer that is displayed or otherwise rendered is generated fully
by the computer application, and is clearly not contained within
the file transmitting the access rights protected content. This is
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Application 11/983,928

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clearly contrary to the claimed playable instructions of the
present invention.
App. Br. 14.
The Examiner responds that
[t]he remaining portion of the limitation being argued, "a file
comprising the access rights protected digital content and
further comprising playable instructions indicating how to
procure access rights to the access rights protected digital
content" is met since Malik's media file contains trial access
terms which are a part of the data structure of the media file
which are further described and illustrated in Figures 3 and 4.
Figure 11 represents "how to procure access rights" and further
provides "Option 1" or "Option 2" for buying a license. Thus
Malik discloses the argued limitation.
Ans. 11.
The relied-upon Malik disclosures describe a media file having trial
access terms associated with the use of the media file. “The trial access
terms are received . . . and may be included as part of the data structure
containing the media file.” Para. 46. “If an expired trial period is detected,
then the media sharing application . . . presents an offer to the user for
purchasing a new license for continued use . . . . ” Para. 56.
Malik discloses a media file having trial access terms and thus
necessarily discloses a file containing the claimed element (a) “the access
rights protected digital content.” The question is whether Malik’s media file
further also contains (b) “playable instructions indicating how to procure
access rights to the access rights protected digital content” (claim 1). We
have reviewed the evidence and find that it preponderantly weighs in favor
of the Appellants’ position.
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The Examiner’s position is that Malik’s very “trial access terms
[which] may be included as part of the data structure containing the media
file” (para. 46) perform as (b) “playable instructions indicating how to
procure access rights to the access rights protected digital content” (claim 1).
In other words, the Examiner found (b) “playable instructions indicating
how to procure access rights to the access rights protected digital content”
(claim 1) reads on Malik’s “trial access terms.”
The broadest reasonable construction of the claim phrase “playable
instructions” (claim 1) is that it covers instructions in a form to be performed
by a device. Malik does not disclose its “trial access terms” in a form
performable on a device. This is evidenced by Malik describing a media
sharing application which “detects” an expired trial term. To one of
ordinary skill in the art “trial access terms” which can be “detected” would
suggest the “trial access terms” are simply present in the media file as
informational data. It is Malik’s media sharing application, not Malik’s
media file, which contains instructions in a form to be performed by a device
(i.e., “playable instructions”). This is so because, according to Malik, once
the “trial access terms” are “detected,” it “presents an offer to the user for
purchasing a new license for continued use . . . . ” Para. 56. Thus, Malik’s
media sharing application employs playable instructions to inform a user on
what to do next once it has detected information indicating that the trial time
has expired for the media file being accessed.
Accordingly, we find that Malik does not disclose a file containing the
claimed element (b) “playable instructions indicating how to procure access
rights to the access rights protected digital content” (claim 1). Malik does
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not disclose a file containing “playable instructions.” And, it does not
further disclose “playable instructions indicating how to procure access
rights to the access rights protected digital content” (claim 1).
For the foregoing reasons, a prima facie case of obviousness has not
been made out in the first instance by a preponderance of the evidence.
Our discussion has focused on claim 1. But the other two independent
claims 6 and 9, and thus all the claims on appeal, also include the “playable
instructions” limitation and the Examiner’s position that this is disclosed in
Malik via its disclosure of “trial access terms” is the same. Ans. 7 and 8,
respectively. Therefore, our finding that a prima facie case of obviousness
has not been made out in the first instance by a preponderance of the
evidence applies to all the rejected claims.

The rejection of claim 7 under 35 U.S.C. § 103(a) as being unpatentable
over Malik, Fransdonk, and Edwards.
Claim 7 depends on claim 6 whose rejection we have reversed for the
reasons discussed above. The rejection of claim 7 relies on the finding that
the “playable instructions” limitation is disclosed in Malik via its disclosure
of “trial access terms.” Ans. 9. Accordingly, our finding that a prima facie
case of obviousness has not been made out in the first instance for the
subject matter of claim 6 by a preponderance of the evidence applies to the
subject matter of claim 7 as well.

CONCLUSIONS
The rejection of claims 1–6 and 8–10 under 35 U.S.C. § 103(a) as
being unpatentable over Malik and Fransdonk is not sustained.
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Application 11/983,928

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The rejection of claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Malik, Fransdonk, and Edwards is not sustained.

DECISION
The decision of the Examiner to reject claims 1–10 is reversed.

REVERSED
hh