Ex Parte Naslund et al

Patent Trial and Appeal Board

May 27, 2016

10524423 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/524,423 02/14/2005
27045 7590
ERICSSON INC.
6300 LEGACY DRIVE
MIS EVR 1-C-11
PLANO, TX 75024
06/01/2016
FIRST NAMED INVENTOR
Mats Naslund
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Pl7234-US1 6264
EXAMINER
COPPOLA, JACOB C
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
06/01/2016 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):
kara.coffman@ericsson.com
kathryn.lopez@ericsson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATS NASLUND, GORAN SELANDER,
and ULF VJORKENGREN
Appeal2013-002326
Application 10/524,4231
Technology Center 3600
Before, JOSEPH A. FISCHETTI, JAMES A. WORTH, and
BRUCE T. WIEDER, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 68-71. We have jurisdiction under 35 U.S.C.
§ 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 Appellants identify Telefonaktiebolaget LM Ericsson as the real party in
interest. Br. 1.
Appeal2013-002326
Application 10/524,423
THE INVENTION
Appellants claim a "digital rights management (DRM) for managing
digital content provided over networks, and more particular to monitoring
usage of digital content by a client in a DRM system." Specification 1.
Claim 68 reproduced below, is representative of the subject matter on
appeal.
68. A client system that uses digital content provided by a content
provider over a network, said content-using client system comprising:
a receiving agent that receives certain digital content from said
content provider, wherein the receiving agent is implemented in hardware or
a combination of hardware-software;
a rendering device that renders said received digital content, wherein
the rendering device is implemented in hardware or a combination of
hardware-software;
a logging agent that monitors usage information concerning the actual
rendering of said digital content by said rendering device, wherein the
logging agent is implemented in hardware or a combination of hardware-
software; and
an authenticator that performs a security operation to
cryptographically link said usage information with a particular user account
or identity, wherein the authenticator is implemented in hardware or a
combination of hardware-software.
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Application 10/524,423
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Kobata US 2002/0077986 Al
US 6,389,538 Bl
Jun.20,2002
May 14, 2002 Gruse
The following rejections are before us for review.
Claims 68-71 are rejected under 35 U.S.C.§ 112, second paragraph,
as being indefinite for failing to particularly point out and distinctly claim
the subject matter.
Claims 68-71 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gruse in view ofKobata.
FINDINGS OF FACT
1. We adopt the Examiner's findings as set forth on pages 19-20 of
the Answer directed to the 35 U.S.C. § 103(a) rejection only.
2. Specification describes an authenticator in various types of
embodiments as follows:
The security operation of the invention for
enabling identification of the client by linking the
logged usage information thereto can be performed
in a number of different ways. Firstly, as was
mentioned above, at least part of an authentication
of the usage information can be performed by the
client. This authentication could be a signing of the
usage information using a private signing key of an
asymmetric key pair, where the associated public
verification key together with a certificate on the
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Application 10/524,423
public key is certified by a trusted party, e.g. the
network operator. Alternatively, an authentication
tag based on symmetric keys can be appended to
the logged usage information, allowing
identification from whom the information is
derived by involving a trusted third party knowing
the symmetric key. The origin of the usage
information could also, at least implicitly, be
identified by encrypting or cryptographically
protecting the usage information with a protected
key. Alternatively, the client could send the
generated usage information to a trusted third
party, which performs the actual security
operation. Another possible security operation is to
store the logged usage information in an
environment that is inaccessibly [sic] for the user,
but associated thereto or to the client system. A
typical example is the environment of a subscriber
identity module (SIM). For activating the SIM
environment the user typically enters a pin code or
personal security code.
Specification 4: 11-28
3. The Examiner found that Kobata discloses the claimed
authenticator:
Kobata teaches an authenticator (computer device
310 of fig. 3) that performs a security operation to
cryptographically link said usage information with
a particular user account or identity ([0158]: usage
information is stored in database 412 when content
is manipulated by, e.g., device 310; [0145]:
database 412 is decrypted by user's public key,
therefore necessarily encrypted by user's private
key, which creates a cryptographic link between
the usage info and the user), wherein the
authenticator is implemented in hardware of a
combination of hardware-software (see description
of310).
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Application 10/524,423
(Final Act. 9).
4. Kobata discloses
Next, the personal rights manager module 414
may, for example, be required to communicate
with the global rights manager unit 312 via the
communication pathway 314 in order to verify that
the particular end-user is authorized to manipulate
the particular digital content 320 on the particular
computer device 310 (step 516). This
authentication procedure also can be done locally,
via the local digital rights database 412 or another
digital rights database available via some other
storage device accessible by the computer 310.
Para. 143.
5. Kobata discloses
The personal rights manager module 414 may
further access the database of digital rights in order
to determine what, if any, digital rights exist to
manipulate the digital content 320 (steps 514 and
516). This procedure may entail simply locating
the local digital rights database 412, decrypting the
local digital rights database 412, and determining
the digital rights available to manipulate the digital
content 320.
Para. 144.
6. Kobata discloses that encrypted digital rights can be stored locally
on the computer 310. Para. 14 3.
ANALYSIS
35 U.S.C. § 112 SECOND REJECTION
We will reverse the rejection of claims 68-71 under 35 U.S.C. § 112
second paragraph.
A claim limitation will be interpreted to invoke 35 U.S.C. § 112, sixth
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Application 10/524,423
paragraph, if it meets the following 3-prong analysis:
(A) the claim limitation uses the term "means" or "step" or a term
used as a substitute for "means" that is a generic placeholder (also called
a nonce term or a non-structural term having no specific structural
meaning) for performing the claimed function;
(B) the term "means" or "step" or the generic placeholder is modified
by functional language, typically, but not always linked by the transition
word "for" (e.g., "means for") or another linking word or phrase, such as
"configured to" or "so that"; and
(C) the term "means" or "step" or the generic placeholder is not
modified by sufficient structure, material, or acts for performing the
claimed function.
M.P.E.P. § 2181, 9th ed. (2015).
Mechanism For Language
"[T]he '254 patent's claim language does not include the
word "means," but instead the similar word "mechanism." This
court has had several prior occasions to consider the
applicability of means-plus-function treatment in the context of
the claim term "mechanism." In Massachusetts Institute Of
Technology v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir.
2006) ("MIT"), this court considered the applicability of
means-plus-function treatment to the term "colorant selection
mechanism." This court noted that "[t]he generic terms
'mechanism,' 'means,' 'element,' and 'device,' typically do not
connote sufficiently definite structure [to avoid means-plus-
function treatment] ... The term 'mechanism' standing alone
connotes no more structure than the term 'means."' Id.
(emphasis added).
Welker Bearing Co. v. PHD Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008).
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Appellants argue that
Applicant respectfully submits that claims 68-71
do not have claimed phrases which invoke 35
U.S.C § 112, sixth paragraph. In this regard, the
Examiner acknowledged the claimed limitations
do not use the phrases "means for" or "step for"
which is a strong indication that the claimed
phrases do not invoke 35 U.S.C. 112, sixth
paragraph.
(Appeal Br. 4).
We agree with Appellants. We find that claim terms "receiving
agent", "rendering device" and "authenticator" are not generic terms for
purposes of a 35 U.S.C. § 112 sixth paragraph analysis. Generic terms do not
connote sufficiently definite structure to avoid means-plus-function
treatment. Welker, 1096. We find that these terms are not generic in that,
for example, an authenticator has structure which, either by fixed code or by
hard wiring, causes data to be authenticated. Thus, since we find the terms
at issue to each connote more structure we than would the generic term
"means", we do not construe the claims to invoke 35 U.S.C. § 112 6th
paragraph. For this reason, we will not sustain the rejection of claims 68-71
under 35 U.S.C. § 112, 2nd paragraph.
35 U.S.C. § 103 REJECTION
The Appellants argue claims 68 and 69 as a group, claim 68 being the
representative claim for this group (Appeal Br. 5), and the remaining
dependent claim 69 standing or falling with claim 68. 37 C.F.R. §
41.37(c)(l)(iv) (2012).
Appellants argue
In reading Kobata's paragraphs [109] and [154] it
is clear that the content is being encrypted with the
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Application 10/524,423
purpose of preventing or controlling access. In
particular, Kobata teaches that the digital content
remains "secured" until it is determined that the
user has the right to access the digital content
However, Kobata does not teach where the user's
usage/manipulation information of the accessed
digital content is ever "secured" in the database
412. Hence, there is no hint to the presently
claimed invention's "an authenticator performs a
security operation to cryptographically link said
usage information with a particular user account or
identity" (emphasis and footnote omitted).
(Appeal Br. 7).
We disagree with Appellants.
We begin by construing the scope of claim 68. Claim 68 uses
functional language, i.e., "an authenticator that performs a security operation
to cryptographically link said usage information with a particular user
account or identity, .... " As functional language, we are required to give
this language weight only to the extent that the prior art is or is not capable
of meeting the limitation. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed.
Cir. 1997).
The authenticator is described by Appellants' Specification on "page
4, lines 1-2, page 4, lines 12-23, page 20, lines 1-2, FIGS. 2-5 and 7-9,
items 160 and 162, and FIGS. 8-9, item 460." (Appeal Br. 2). According to
the Specification on page 4, numerous devices can be used as the
authenticator. (FF. 2).
The Examiner found that the authenticator is disclosed by Kobata's
computer device 310. (FF. 3). We find no error with the Examiner's finding
here. Our review of Kobata reveals that Kobata does disclose an
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authenticator at the personal rights manager module 414 which decrypts the
local digital rights database 412, and determines the digital rights available
to manipulate the digital content 320. (FF. 5). The encrypted digital rights
can be stored locally on the computer 310. (FF. 6).
Insofar as the personal rights manager module 414 decrypts the local
digital rights database 412 and verifies that the particular end-user is
authorized to manipulate the particular digital content 320 via local digital
rights database 412 (FF. 4-6), we find that Kobata discloses
cryptographically linking the usage information (content manipulation data
320) with a particular user account or identity (end user verification data).
Appellants argue, "Applicant submits that the Examiner's
interpretation of Kobata where he considers it to teach that an authentication
procedure is required to authenticate the digital rights for every attempt to
manipulate the digital content 320 does not hint to the need to authenticate
the usage/manipulation information for every attempt to manipulate the
digital content 320. (emphasis omitted)" (Appeal Br. 11)
We disagree with Appellants because we find nothing in Kobata
would prevent the personal rights manager module 414 from authenticating
usage/manipulation information for every attempt to manipulate the digital
content 320. At the very least, Kobata is capable of doing this.
Also, "Applicant argues that the Examiner has not established a
prima facie case of obviousness and that the Examiner's assumptions with
respect to Kobata's teaching where usage information is encrypted and more
specifically where the usage information is encrypted with the user's private
key do not constitute the disclosure of prior art." (Appeal Br. 12)
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In light of the breadth of the claim, the Appellants' argument is not
persuasive as to error in the rejection. First, the claim does not require that
usage information be encrypted as argued by Appellants. Instead, the claim
only recites "cryptographically link[ing] said usage information with a
particular user account or identity" which we find is met by Kobata
disclosing that the rights manager module 414 decrypts the local digital
rights database 412, and determines the digital rights available to the user.
(FF. 4-6).
Appellants further argue
"an authenticator that performs a security operation
to cryptographically link said usage information
with a particular user account or identity" is
concerned with providing a "cryptographical
tracking" of the user's
renderings/usages/manipulations of the digital
content. Clearly, the Examiner should realize that
this usage information is in general only available
after such rendering/usage/manipulation of the
digital content has occurred, .... (emphasis
omitted)"
(Appeal Br. 13).
We disagree with Appellants because nothing in the claims require
"cryptographically tracking" nor does anything in claim 68 tie usage
information to when or even how it is gathered.
Appellants argue claims 7 0 and 71 based on the arguments advanced
for claim 68 which we find unpersuasive, and thus find equally unpersuasive
for claims 7 0 and 71.
CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 68-71 under
35 U.S.C. § 112.
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We conclude the Examiner did not err in rejecting claims 68-71 under
35 U.S.C. § 103.
DECISION
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.
§ 1.136(a)(l )(iv).
AFFIRMED.
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