Ex Parte Ouye et al

Patent Trial and Appeal Board

Sep 19, 2016

10127109 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
10/127,109 04/22/2002 Michael Michio Ouye
26111 7590 09/20/2016
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK A VENUE, N.W.
WASHINGTON, DC 20005
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.
2222.5390008 5024
EXAMINER
REAGAN, JAMES A
ART UNIT PAPER NUMBER
3621
MAILDATE DELIVERY MODE
09/20/2016 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 MICHAEL MICHIO OUYE and STEVEN TOYE CROCKER
Appeal2014-002461
Application 10/127,109
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Michael Michio Ouye and Steven Toye Crocker (Appellants) seek
review under 35 U.S.C. § 134 of a final rejection of claims 49-76, the only
claims pending in the application on appeal. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed August 23, 2013) and Reply Brief ("Reply Br.," filed December
6, 2013), and the Examiner's Answer ("Ans.," mailed October 8, 2013), and
Final Action ("Final Act.," mailed December 27, 2012).
Appeal2014-002461
Application 10/127,109
The Appellants invented a way of evaluating access rights to a protected
system or secured digital assets. Spec., para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 49, which is reproduced below (bracketed matter and some
paragraphing added).
49. A method for evaluating an access right to an unencrypted
data portion of a secured file, the method comprising:
[ 1] obtaining a system rule set that is discrete from the secured
file,
wherein the system rule set
comprises rules controlling access to the secured
file in an inter/intra enterprise environment
and
permits allowing a user to access protected
systems;
[2] evaluating the rules of the system rule set
to produce a first logic pass [Roolean TRUE value];
[3] obtaining an access rule set, specific to the secured file,
from a header portion of the secured file,
and
wherein the access rule set comprises rules regulating at
least a duration and a type of access to the secured file;
[ 4] evaluating the rules of the access rule set
to produce a second logic pass [Boolean TRUE value],
wherein producing the second logic pass comprises
obtaining permission to access the secured file.
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Application 10/127,109
The Examiner relies upon the following prior art:
Schneck
Stefik
Carey
Ginter
us 5,933,498
US 2001/0014882 Al
US 2002/0112035 Al
US 2005/0177716 Al
Aug. 3, 1999
Aug. 16, 2001
Aug. 15, 2002
Aug. 11, 2005
Claims 49-51, 53-59, 61---63, and 65-71 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Carey, Ginter, and Stefik.
Claims 52, 60, 64, and 72 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Carey, Ginter, Stefik, and Schneck.
ISSUES
The issues of obviousness tum primarily on whether the art shows it was
predictable to perform two logical tests on files and then allow a user to
access those files.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. A "logic pass" refers to a Boolean TRUE value. Spec.,
para. 4 3. That is, a logical pass refers to the opposite of FAIL, as
in PASS/FAIL, and not to an act of passing as in a passing
through an instance of software execution.
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Application 10/127,109
Facts Related to the Prior Art
Carey
02. Carey is directed to content management systems, and more
particularly to content information for both traditional and non-
traditional media. Carey, para. 3.
03. Carey's client rules stored in a client profile database are
applied to the content stored in a content database. The effect of
the application of these rules is to eliminate those content files that
do not meet the criteria of the applied client rules. Thus, the
resulting content files are those files that are somehow related or
applicable to the profile of the client for which content files are
being searched. Carey, para. 176.
Ginter
04. Ginter is directed to secure transaction management. Ginter,
para. 2.
05. Ginter describes its object construction stage as using
information in object configuration file 1240 to assemble or
modify a container. This process typically involves
communicating a series of events to Secure Processing
Environment (SPE) 503 to create one or more permissions records
(PER Cs) 808, public headers, private headers, and to encrypt
content, all for storage in the new object 300. Ginter, para. 908.
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Application 10/127,109
06. Ginter describes a traveling object structure as including a
permissions record (PERC) within a private header. Ginter,
para. 1107.
Stefik
07. Stefik is directed to distribution and usage rights enforcement
for digitally encoded works. Stefik, para. 1.
08. Stefik describes controlling the distribution and use of digital
works using digital tickets. A ticket is an indicator that the ticket
holder has already paid for or is otherwise entitled to some
specified right, product or service. A "digital ticket" is used to
enable the ticket holder to exercise usage rights specifying the
requirement of the digital ticket. Usage rights are used to define
how a digital work may be used or distributed. Specific instances
of usage rights are used to indicate a particular manner of use or
distribution. A usage right may specify a digital ticket which must
be present before the right may be exercised. For example, a
digital ticket may be specified in a Copy right of a digital work, so
that exercise of the Copy right requires the party that desires a
copy of the digital work be in possession of the necessary digital
ticket. After a copy of the digital work is successfully sent to the
requesting party, the digital ticket is "punched" to indicate that a
copy of the digital work has been made. When the ticket is
"punched" a predetermined number of times, it may no longer be
used. Stefik, para. 15.
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Application 10/127,109
09. Stefik describes digital works as being stored in repositories.
Repositories enforce the usage rights for digital works. Each
repository has a "generic ticket agent" which punches tickets.
Stefik, para. 16.
10. Stefik describes usage rights as being attached directly to digital
works. The structure of a digital work, in particular composite
digital works, may be naturally organized into an acyclic structure
such as a hierarchy. For example, a magazine has various articles
and photographs which may have been created and are owned by
different persons. Each of the articles and photographs may
represent a node in a hierarchical structure. Consequently,
controls, i.e. usage rights, may be placed on each node by the
creator. Stefik, para. 96.
11. Stefik describes grammar element 1501 "Digital Work
Rights:=(Rights*)" that defines the digital work rights as a set of
rights. The set of rights attached to a digital work define how that
digital work may be transferred, used, performed or played. A set
of rights will attach to the entire digital work and in the case of
compound digital works, each of the components of the digital
work. The usage rights of components of a digital may be
different. Stefik, para. 153.
12. Stefik describes grammar element 1502 "Right:=(Right---Code
{Copy-Count} {Control-Spec} {Time-Spec} {Access-Spec}
{Fee-Spec})" which enumerates the content of a right. Each
usage right must specify a right code. Each right may also
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Application 10/127,109
optionally specify conditions which must be satisfied before the
right can be exercised. These conditions are copy count, control,
time, access and fee conditions. Stefik, para. 154.
13. Stefik describes grammar element 1503 "Right-Code:=Render-
Code. vertline. Transport-Co--- de. vertline. File-Management-
Code. vertline.Derivative-Works- Code Configuration-Code"
which distinguishes each of the specific rights into a particular
right type (although each right is identified by distinct right
codes). In this way, the grammar provides a catalog of possible
rights that can be associated with parts of digital works. Stefik,
para. 156.
ANALYSIS
Before launching into an analysis of the rejections, we first find that the
Specification resolves an ambiguity in claim 49 in a manner that might be
unexpected. Claim 49 has two steps that each produces a logic pass. A
casual reading of this in the context of a method claim might lead one to
assume this logic pass means a pass through the logic of a software routine.
This would be incorrect. Instead, the Specification paragraph 43
lexicographically defines a logic pass as a Boolean TRUE value used in the
sense of PASS/FAIL.
Claim 49 is a method claim with four steps, viz. obtaining a rule set,
evaluating those rules to produce a TRUE value result, obtaining another
rule set, and evaluating those rules to also produce a TRUE value result.
That is, in fact, the scope of the actual steps claim 49 performs. The steps
affirmatively require that the first rule set be discrete from some file and the
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Application 10/127,109
second set be within the header portion of that file. Appellants do not
contest this insofar as this goes, other than to argue the motivation to
combine the two rule sets in a single process. Instead, Appellants contest the
mental perceptions applied by the art as contrasted with claim 49 in rule
interpretations and aspirational desire as to how the rules are then to be
applied.
The first set of rules are labelled as rules controlling access to the
secured file in an inter/intra enterprise environment and that permit allowing
a user to access protected systems. The second set of rules is labelled as an
access rule set comprising rules regulating at least a duration and a type of
access to the secured file. Although the second step evaluates a rule to
produce a TRUE result, claim 49 does nothing with this result. Step 3 is
independent of the result in step 2. Similarly, although the fourth step
evaluates a rule to produce a TRUE result, claim 49 does nothing with this
result. The final wherein clause of the fourth step suggests we perceive the
TRUE result as a permission to access a secured file, as nothing is done with
this result; this perception as a permission is just that, a mental perception in
the mind of the beholder. Although this phrase uses the word "obtaining,"
no implementation is recited and so mentally interpreting the second pass as
such permission is within the scope of "obtaining."
Nothing in the claim depends on or enforces the perceptual labels the
claim suggests. Mental perceptions of what data represents are non-
functional and given no weight. King Pharm., Inc. v. Eon Labs, Inc.,
616 F.3d 1267, 1279 (Fed. Cir. 2010) ("[T]he relevant question is whether
'there exists any new and unobvious functional relationship between the
printed matter and the substrate.'") (citations omitted). See also In re Lowry,
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Application 10/127,109
32 F.3d 1579, 1583 (Fed.Cir.1994) (describing printed matter as "useful and
intelligible only to the human mind") (quoting In re Bernhart, 417 F .2d
1395, 1399 (CCPA 1969)). Data labels are just examples of such mental
perceptions. Data, being a succession of binary digits, are just those digits,
not perceptual labels of those digits. The binary digits may impose some
functional consequence, but absent some recitation of how so, such
consequence is not an issue.
The Examiner applies Carey and Stefik as each describing rules separate
from a file and Ginter as describing rules stored within a file's header.
Carey describes using rules to filter down the files of interest and Stefik
applies rules to assign permissions. Thus, one of ordinary skill would have
known to combine the references to achieve the combined result of filtering
down and then establishing permissions of those files from the filtration.
Ginter suggests advantages to putting those permission rights in a file
header. Thus, even granting the labels of the data patentable weight, the
Examiner finds the combination of the applied art describes claim 49.
The arguments come down to arguing relatively broad terms and the
issues become whether the breadth of the terms is sufficient to encompass
the art.
We are not persuaded by Appellants' argument that
Carey is not concerned with protecting access to stored files, as
in the present claims. Rather, Carey is concerned with
recommending the most pertinent content from a content
database to a particular client. ... Carey's "rules [that]
eliminate those content files that do not meet the criteria" must
be viewed in this context. Carey's "client rules" are used to
select "experience enhancing content" for the consumer. . . . In
other words, the "client rules" of Carey do not control access to
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Application 10/127,109
secured content-they instead control dissemination of content
to the client's customer.
In essence, Carey describes the winnowing down of
content that will be provided to a specific end user (customer)
who is not requesting the particular content. . . . This has
nothing to do with protecting the content from the specific end
user. Quite the opposite, in fact. The Examiner's rejection
seeks to tum Carey on its head: Carey attempts to limit the
content provided to a particular end user, while independent
claims 49 and 61 seek to control the number of users that are
able to access a secured file.
App. Br. 9-10. The claim limitations at issue are a rule set that comprises
"rules controlling access to the secured file in an inter/intra enterprise
environment and permits allowing a user to access protected systems."
Again, none of the steps actually controls or allows access, the steps only
recite rules that have such a mental perception attached to them. Further, the
scope of such controlling and allowing is not further narrowed and no
implementation is recited or narrowed. The claim does not recite that the
allowing is directed to the protection as contrasted with the accessing.
Filtering out files that will not be accessed as a result, as in Carey, is within
the scope of controlling such access and permits only those files that result
from the filter to be accessed. The files filtered out become unavailable for
access.
We are not persuaded by Appellants' argument that
Stefik does not teach or suggest what the Examiner alleges ...
The Examiner's rationale for relying on paragraph [0276] of
Stefik is that "STEFIK ... discloses repeating identification
steps before access to files is granted." Final Office Action,
p. 8. But it is not enough that Stefik discusses the repetition of
a "registration message ... until a satisfactory identification
certificate is found." From this statement, the Examiner is
basically asserting that the two "evaluating" elements of
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Application 10/127,109
independent claim 49 are repetitions of the same actions. tiut
independent claim 49 does not recite that the same evaluation is
performed twice. Instead, independent claim 49 recites two
types of evaluation.
App. Br. 10-11. The Examiner relies on Stefik for rules controlling
permissions to access a file. Stefik describes this explicitly using a digital
rights grammar in which to couch such rules. The Examiner apparently read
more into claim 49 than is there with regard to a second pass, assuming it
also meant repeating a test. This is not what claim 49 recites, and the
Examiner's findings in this regard are harmless error.
Claim 61 is similar to claim 49 and is argued based on claim 49.
As to those remaining dependent claims that are argued separately, we
adopt the Examiner's findings and analysis and reach similar legal
conclusions.
CONCLUSIONS OF LAW
The rejection of claims 49-51, 53-59, 61---63, and 65-71 under
35 U.S.C. § 103(a) as unpatentable over Carey, Ginter, and Stefik is proper.
The rejection of claims 52, 60, 64, and 72 under 35 U.S.C. § 103(a) as
unpatentable over Carey, Ginter, Stefik, and Schneck is proper.
DECISION
The rejection of claims 49-76 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.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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