11382855 (B.P.A.I. Dec. 23, 2009)

Ex Parte Rhoads

Board of Patent Appeals and InterferencesDec 23, 2009

11382855 (B.P.A.I. Dec. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE 1 ___________ 2 3 BEFORE THE BOARD OF PATENT APPEALS 4 AND INTERFERENCES 5 ___________ 6 7 Ex parte GEOFFREY B. RHOADS 8 ___________ 9 10 Appeal 2009-005433 11 Application 11/382,855 12 Technology Center 3600 13 ___________ 14 15 Decided: December 23, 2009 16 ___________ 17 18 Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and JOSEPH 19 A. FISCHETTI, Administrative Patent Judges. 20 FETTING, Administrative Patent Judge. 21 DECISION ON APPEAL 22 23 Appeal 2009-005433 Application 11/382,855 2 STATEMENT OF THE CASE 1 Geoffrey B. Rhoads (Appellant) seeks review under 35 U.S.C. § 134 2 (2002) of a final rejection of claims 1-20, the only claims pending in the 3 application on appeal. 4 We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5 (2002). 6 SUMMARY OF DECISION1 7 We REVERSE and ENTER A NEW GROUND OF REJECTION 8 PURSUANT TO 37 C.F.R §41.50(b). 9 THE INVENTION 10 The Appellant invented a method for use of electronic media content, 11 such as digital music and video, in connection with consumer electronic 12 devices (Specification 1:20-21). 13 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed March 12, 2009) and Reply Brief (“Reply Br.,” filed September 23, 2008), and the Examiner’s Answer (“Ans.,” mailed September 2, 2008), and Final Rejection (“Final Rej.,” mailed November 23, 2007). Appeal 2009-005433 Application 11/382,855 3 An understanding of the invention can be derived from a reading of 1 exemplary claims 1 and 2, which are reproduced below [bracketed matter 2 and some paragraphing added]. 3 1. A content protection method in which a consumer electronic 4 device, equipped with one or more outputs of respective types, 5 governs its operation in accordance with usage control data 6 associated with particular electronic content, the method 7 including receiving a request to perform an operation, and 8 determining – with reference to said usage control data – 9 whether to perform said operation, wherein said determining 10 depends, in part, on the type of output with which said device is 11 equipped. 12 13 2. The method of claim 1 wherein the requested operation 14 comprises playback of said particular electronic content, and 15 wherein said determining comprises: 16 [a] if the usage control data comprises data of a first 17 character, and the device is equipped with an output of a first 18 type, determining that said requested playback should not be 19 permitted; and 20 [b] if the usage control data comprises data of said first 21 character, and the device is not equipped with an output of said 22 first type, determining that said requested playback should be 23 permitted. 24 25 THE REJECTIONS 26 The Examiner relies upon the following prior art: 27 Stefik et al. US 6,233,684 B1 May 15, 2001 Sims, III US 6,438,235 B2 Aug. 20, 2002 Takahashi US 6,463,152 B1 Oct. 8, 2002 28 Appeal 2009-005433 Application 11/382,855 4 Claims 1-3 and 6 stand rejected under 35 U.S.C. § 112, second 1 paragraph, as being indefinite for failing to particularly point out and 2 distinctly claim the subject matter which the Appellant regards as the 3 invention. 4 Claims 1, 6-12, 15, 16, and 19 stand rejected under 35 U.S.C. § 103(a) as 5 unpatentable over Stefik and Sims. 6 Claims 2-5, 13, 14, 17, 18, and 20 stand rejected under 35 U.S.C. § 7 103(a) as unpatentable over Stefik, Sims, and Takahashi. 8 9 ISSUES 10 The issues pertinent to this appeal are: 11 • Whether the Appellant has sustained the burden of showing that the 12 Examiner erred in rejecting 1-3 and 6 under 35 U.S.C. § 112, second 13 paragraph, for failing to particularly point out and distinctly claim the 14 subject matter which the Appellant regards as the invention. 15 o This pertinent issue turns on whether a person with ordinary 16 skill in the art would have understand what is being claimed 17 when the claims are read in light of the specification. 18 • Whether the Appellant has sustained the burden of showing that the 19 Examiner erred in rejecting claims 1, 6-12, 15, 16, and 19 under 35 20 U.S.C. § 103(a) as unpatentable over Stefik and Sims. 21 Appeal 2009-005433 Application 11/382,855 5 o This pertinent issue turns on whether Sims describes 1 determining whether to perform an operation depending on the 2 type of output which the device is equipped. 3 • Whether the Appellant has sustained the burden of showing that the 4 Examiner erred in rejecting claims 2-5, 13, 14, 17, 18, and 20 under 5 35 U.S.C. § 103(a) as unpatentable over Stefik, Sims, and Takahashi. 6 o This pertinent issue turns on whether Takahashi describes the 7 limitations of claims 2-5. 8 9 FACTS PERTINENT TO THE ISSUES 10 The following enumerated Findings of Fact (FF) are believed to be 11 supported by a preponderance of the evidence. 12 Facts Related to the Prior Art 13 Stefik 14 01. Stefik is directed to a system for controlling the distribution and 15 usage rights for digitally encoded works and for the identification 16 of non-authorized copies of digitally encoded works that have 17 been rendered. Stefik 1:10-14. 18 02. A digital work is first assigned a set of usage rights, which 19 includes a print right that specifies watermark information and is 20 deposited into a repository. Stefik 8:10-13. The repository then 21 receives a request for access to the digital work from a second 22 repository. Stefik 8:16-20. The second repository receives a 23 request from the user to print the digital work and after it has been 24 Appeal 2009-005433 Application 11/382,855 6 determined that the user has the appropriate usage right to print 1 the work, the second repository communicates with the printer 2 repository to decrypt the digital work, generate the watermark, and 3 transmit the digital work to a printing device. Stefik 8:26-38. 4 03. A digital works creator incorporates a watermark to be placed 5 on their documents. Stefik 12:36-37. A suitable watermark is 6 selected by the creator and is positioned on to the page of the 7 digital work. Stefik 12:41-50. The document can also be viewed 8 prior to printing. Stefik 12:41-50. A printing device then gathers 9 together all of the information to be embedded in the watermark 10 and creates a bitmap imagine of glyph boxes of different sizes. 11 Stefik 13:20-32. The digital work is downloaded into the printer 12 and the font has changed to correspond to the glyph boxes. Stefik 13 13:33-37. The gray codes inside the font boxes are embedded 14 with the data to appear in the watermarks and then the printer 15 prints the digital work with the glyphs that contain the watermark 16 data. Stefik 13:37-44. 17 Sims 18 04. Sims is directed to a system and method for providing 19 controlled utilization of stored content through the use of public 20 keys stored upon the media itself. Sims 1:5-9. 21 05. Operation of the system is not to allow or disallow any 22 particular transmission, but rather to obscure the content of the 23 transmission, using cryptographic methods, such that only a 24 legitimate recipient can make use of the data, i.e. nobody but the 25 Appeal 2009-005433 Application 11/382,855 7 content owner, or those authorized by him/her, is able to copy 1 protected media content. Sims 3:35-45. An author or content 2 provider records public keys on to the protected media such that 3 only authorized decoders on devices and authorized play-back 4 devices will be able to utilize the public keys. Sims 10:45-51. 5 06. A request for access to content stored on a particular play-back 6 device including an identifier indicative of a type of device of said 7 particular play-back device is received. Sims 21:14-17. The 8 identifier is matched to a list of authorized devices and if the 9 device is authorized the content is communicated if the public and 10 content keys match. Sims 21:18-30. 11 Takahashi 12 07. Takahashi is directed to a digital broadcast receiving and 13 reproducing apparatus serving the function of protecting a 14 copyright by preventing unauthorized viewing or copying of a 15 digital broadcast. Takahashi 1:6-9. 16 08. A digital broadcast receiver receives a digital broadcast and 17 descrambles the data and takes out the digital audio and the digital 18 video. Takahashi 2:55-61. A decoder decodes the digital audio 19 data and digital video data, converts the data into analog video 20 signal and analog audio signal, and sends the converted signal to a 21 data output judging unit. Takahashi 2:62-65. 22 09. An output data selector selects one of decoded data, digital data, 23 or both as the type of output data. Takahashi 3:17-19. When the 24 selector selects the decoded data, the data output judging unit 25 Appeal 2009-005433 Application 11/382,855 8 transfers the decoded data to a decoded data output unit. 1 Takahashi 3:18-22. If digital data is selected, the data output 2 judging unit transfers the digital data to a record judging unit. 3 Takahashi 3:23-25. When both are selected, the decoded data is 4 sent to the decoded data output unit and the digital data is sent to a 5 record judging unit. Takahashi 3:26-29. 6 10. The data output judging unit determines if the type of the output 7 data designated by the user, through the selector, is decoded data, 8 digital data, or both. Takahashi 4:32-35. If decoded data only is 9 selected, the received digital data is decoded and issued to the 10 display device and there is no output to the recording device. 11 Takahashi 4:35-38. If digital data only is selected, the scrambler 12 sets 0 as the number of times of present use, which is the number 13 of times of use of the data during processing. Takahashi 4:38-42. 14 If both decoded data and digital data are selected, the scrambler 15 sets 1 as the number of times of present use. Takahashi 4:42-46. 16 11. The record judging unit determines whether there is permission 17 to record the data based on a comparison of the number of times 18 of limited use in the copy protection information received and the 19 number of types of data selected and issued by the data output 20 judging unit. Takahashi 3:30-35. If recording is possible, digital 21 data is transferred to the digital input and output unit and the 22 decoded data output unit protects analog data with analog copy 23 protection. Takahashi 3:35-42. 24 25 Appeal 2009-005433 Application 11/382,855 9 Facts Related To The Level Of Skill In The Art 1 12. Neither the Examiner nor the Appellant has addressed the level 2 of ordinary skill in the pertinent arts of electronic content 3 management and digital rights management. We will therefore 4 consider the cited prior art as representative of the level of 5 ordinary skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 6 1355 (Fed. Cir. 2001) (“[T]he absence of specific findings on the 7 level of skill in the art does not give rise to reversible error ‘where 8 the prior art itself reflects an appropriate level and a need for 9 testimony is not shown’”) (quoting Litton Indus. Prods., Inc. v. 10 Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985). 11 Facts Related To Secondary Considerations 12 13. There is no evidence on record of secondary considerations of 13 non-obviousness for our consideration. 14 PRINCIPLES OF LAW 15 Indefiniteness 16 The test for definiteness under 35 U.S.C. § 112, second paragraph, is 17 whether “those skilled in the art would understand what is claimed when the 18 claim is read in light of the specification.” Orthokinetics, Inc. v. Safety 19 Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)(citations omitted). 20 Obviousness 21 A claimed invention is unpatentable if the differences between it and 22 the prior art are “such that the subject matter as a whole would have been 23 obvious at the time the invention was made to a person having ordinary skill 24 Appeal 2009-005433 Application 11/382,855 10 in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham 1 v. John Deere Co., 383 U.S. 1, 13-14 (1966). 2 In Graham, the Court held that that the obviousness analysis is 3 bottomed on several basic factual inquiries: “[(1)] the scope and content of 4 the prior art are to be determined; [(2)] differences between the prior art and 5 the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 6 in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 7 U.S. at 406. “The combination of familiar elements according to known 8 methods is likely to be obvious when it does no more than yield predictable 9 results.” KSR, 550 U.S. at 416. 10 ANALYSIS 11 Claims 1-3 and 6 rejected under 35 U.S.C. § 112, second paragraph, for 12 indefinite for failing to particularly point out and distinctly claim the subject 13 matter which the Appellant regards as the invention 14 The Examiner found that the terms “respective types” (from claim 1), 15 “first character” (from claim 2), “first type” (from claim 2), “second 16 character” (from claim 3), and “particular type” (from claim 6) were unclear 17 (Ans. 3). The Appellant contends that this claim language is not insolubly 18 ambiguous. App. Br. 6-7. The Appellant further asserts that “respective 19 type” refers to the type of output such as an analog audio output, a digital 20 audio output, unencrypted audio output, etc.; “first character” refers to the 21 first bit position of a six-bit field indicates the classes of devices for which 22 analog-only signals of the audio is authorized; “second character” refers to 23 the second bit position of a six-bit field indicates the classes of devices for 24 Appeal 2009-005433 Application 11/382,855 11 which digital-only signals of the audio is authorized; and “particular type” 1 refers to the type of signal available at an output. App. Br. 7. 2 We agree with the Appellant. A reasonable interpretation for these 3 terms can be constructed based on the claim language and the context in 4 which the terms are used in the specification. The Appellant has provided 5 specific descriptions of the terms in the Appeal Brief, as noted supra. App. 6 Br. 7. Furthermore, the Examiner has conceded that the terms can be 7 interpreted or constructed for the provided rejection. Ans. 8. As such, we 8 find that a person with ordinary skill in the art would have understood what 9 is being claimed when the claims are read in light of the specification. 10 The Appellant has sustained the burden of showing that the Examiner 11 erred in rejecting claims 1-3 and 6 under 35 U.S.C. § 112, second paragraph, 12 for indefinite for failing to particularly point out and distinctly claim the 13 subject matter which the Appellant regards as the invention. 14 15 Claims 1, 6-12, 15, 16, and 19 rejected under 35 U.S.C. § 103(a) as 16 unpatentable over Stefik and Sims 17 The Appellant contends that (1) Sims fails to describe a particular type 18 of output with which a device is equipped. App. Br. 8-10. 19 We agree with the Appellant. Sims describes a system for protecting 20 content distribution through the use of public keys. FF 04, 05, and 06. Sims 21 describes that a content owner can select from a list of providers for devices 22 to authorize the play-back of the owner’s content. FF 05 and FF 06. Sims 23 further describes that the content includes an identifier of authorized devices 24 and only when this identifier is found will public and private keys be 25 Appeal 2009-005433 Application 11/382,855 12 exchanged for authentication. FF 06. Sims, however, fails to describe 1 determining whether to perform an operation based on the type of output 2 with which the device is equipped, as required by claim 1. Sims only 3 mentions that content can be played back from a device, but fails to 4 specifically integrate the type of output from a device into the decision to 5 perform an operation. As such, Stefik and Sims fail to describe claim 1 and 6 the Examiner has failed to make a prima facie case of obviousness. 7 The Appellant further contends that (2) there is no motivation to 8 combine Stefik and Sims (App. Br. 10 and 12), (3) Sims fails to describe 9 limiting use of the device is equipped with an output of a particular type, as 10 required by claim 6 (App. Br. 11), and (4) Sims fails to describe any 11 arrangement in which use of a device is limited in the case where the device 12 is capable of outputting content in digital format, as required by claim 7 13 (App. Br. 11). However, since we found the Appellant’s first argument to be 14 determinative, we find that we need not reach decisions on these issues. 15 The Appellant has sustained the burden of showing that the Examiner 16 erred in rejecting claims 1, 6-12, 15, 16, and 19 under 35 U.S.C. § 103(a) as 17 unpatentable over Stefik and Sims. 18 19 Claims 2-5, 13, 14, 17, 18, and 20 rejected under 35 U.S.C. § 103(a) as 20 unpatentable over Stefik, Sims, and Takahashi 21 Dependant claims 2-5, 13, 14, 17, 19, and 20 depend from independent 22 claims 1, 12, and 16 and as such the Appellant has sustained the burden of 23 showing that the Examiner erred in rejecting claims 2-5, 13, 14, 17, 18, and 24 Appeal 2009-005433 Application 11/382,855 13 20 under 35 U.S.C. § 103(a) as unpatentable over Stefik, Sims, and 1 Takahashi for the same reasons discussed supra. 2 3 NEW GROUND OF REJECTION 4 The following new ground of rejection is entered pursuant to 37 C.F.R. § 5 41.50(b). Independent claims 1, 11, 15, and 16 are rejected under 35 U.S.C. 6 § 103(a) as unpatentable over Stefik and Takahashi. 7 Claims 1, 11, 15, and 16 require a device that is equipped with two or 8 more types of output. The device further operates based on usage data 9 associated to a specific electronic content, where when an operation is 10 requested and the device determines whether to perform operation based on 11 the type of output the device is equipped and with reference to said usage 12 control data. 13 Stefik describes a system where a specific digital work is assigned a set 14 of usage rights. FF 02. The digital work is deposited into a repository. FF 15 02. When a request for the digital work is received, the system determines 16 whether the requesting user has the usage right to receive the digital work. 17 FF 02. If the requesting user has the appropriate usage rights, a watermark 18 is embedded in to the digital work and provided to the user decrypted. FF 19 02 and FF 03. 20 Stefik fails to describe determining whether to perform an operation 21 based on the type of output the device is equipped with. Takahashi 22 describes this feature of claim 1. Takahashi describes a device equipped to 23 protect a digital work. FF 07. Takashi further describes that the device is 24 Appeal 2009-005433 Application 11/382,855 14 equipped with multiple outputs, such as decoded and digital data outputs. 1 FF 09. If a digital work or electronic content is requested, the device 2 determines which operation to perform depending on the output type. FF 3 09. A judging unit determines whether usage rights and permissions are 4 available for an output type and does not perform a play-back operation if 5 the appropriate permissions are not available. FF 10 and FF 11. 6 Stefik and Takahashi are both concerned with protecting digital works 7 through the use of authentications and permissions. FF 01 and FF 07. Stefik 8 accomplishes this goal by assigning usage rights to a digital work. FF 02. 9 Takahashi accomplishes this goal through the use of judging units that 10 determine permission. FF 10 and FF 11. As such, both Stefik and 11 Takahashi are concerned with the same subject matter and accomplish their 12 goals using similar functionality. A person with ordinary skill in the art 13 would have recognized to combine Stefik and Takahashi in order to further 14 protect digital works from unauthorized use by determining whether to 15 perform an operation based on the output type. As such, a person with 16 ordinary skill in the art would have been led to combine Stefik and 17 Takahashi. 18 We leave the question of whether the remaining dependent claims are 19 patentable over this combination in further combination with the remaining 20 art of record to the Examiner. 21 CONCLUSIONS OF LAW 22 The Appellant has sustained the burden of showing that the Examiner 23 erred in rejecting claims 1-3 and 6 under 35 U.S.C. § 112, second paragraph, 24 Appeal 2009-005433 Application 11/382,855 15 for indefinite for failing to particularly point out and distinctly claim the 1 subject matter which the Appellant regards as the invention. 2 The Appellant has sustained the burden of showing that the Examiner 3 erred in rejecting claims 1, 6-12, 15, 16, and 19 under 35 U.S.C. § 103(a) as 4 unpatentable over Stefik and Sims. 5 The Appellant has sustained the burden of showing that the Examiner 6 erred in rejecting claims 2-5, 13, 14, 17, 18, and 20 under 35 U.S.C. § 103(a) 7 as unpatentable over Stefik, Sims, and Takahashi. 8 A new ground of rejection is entered 37 C.F.R. § 41.50(b) in which 9 claims 1, 11, 15, and 16 are rejected under 35 U.S.C. § 103(a) as 10 unpatentable over Stefik and Takahashi. 11 12 DECISION 13 To summarize, our decision is as follows. 14 • The rejection of claims 1-3 and 6 under 35 U.S.C. § 112, second 15 paragraph, for indefinite for failing to particularly point out and 16 distinctly claim the subject matter which the Appellant regards as the 17 invention is not sustained. 18 • The rejection of claims 1, 6-12, 15, 16, and 19 under 35 U.S.C. § 19 103(a) as unpatentable over Stefik and Sims is not sustained. 20 • The rejection of claims 2-5, 13, 14, 17, 18, and 20 stand 35 U.S.C. § 21 103(a) as unpatentable over Stefik, Sims, and Takahashi is not 22 sustained. 23 Appeal 2009-005433 Application 11/382,855 16 • A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b). 1 o Claims 1, 11, 15, and 16 are rejected under 35 U.S.C. § 103(a) 2 as unpatentable over Stefik and Takahashi. 3 4 This decision contains new grounds of rejection pursuant to 37 CFR § 5 41.50(b). 37 CFR § 41.50(b) provides “[a] new ground of rejection pursuant 6 to this paragraph shall not be considered final for judicial review.” 7 8 37 CFR § 41.50 (b) also provides that the appellant, WITHIN TWO 9 MONTHS FROM THE DATE OF THE DECISION, must exercise one of 10 the following two options with respect to the new ground of rejection to 11 avoid termination of the appeal as to the rejected claims: 12 (1) Reopen prosecution. Submit an appropriate amendment of the claims 13 so rejected or new evidence relating to the claims so rejected, or both, and 14 have the matter reconsidered by the examiner, in which event the proceeding 15 will be remanded to the examiner …. 16 (2) Request rehearing. Request that the proceeding be reheard under § 17 41.52 by the Board upon the same record …. 18 19 No time period for taking any subsequent action in connection with this 20 appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 21 22 Appeal 2009-005433 Application 11/382,855 17 REVERSED 1 41.50(b) 2 3 4 mev 5 6 Address 7 DIGIMARC CORPORATION 8 9405 SW GEMINI DRIVE 9 BEAVERTON OR 97008 10