10364643 (B.P.A.I. May. 23, 2011)

Ex Parte Risan et al

Board of Patent Appeals and InterferencesMay 23, 2011

10364643 (B.P.A.I. May. 23, 2011)

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. 10/364,643 02/10/2003 Hank Risan MOMI-010.CIP 7484 70407 7590 05/23/2011 MEDIA RIGHTS TECHNOLOGIES C/O WAGNER BLECHER LLP 123 WESTRIDGE DRIVE WATSONVILLE, CA 95076 EXAMINER LANIER, BENJAMIN E ART UNIT PAPER NUMBER 2432 MAIL DATE DELIVERY MODE 05/23/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte HANK RISAN and EDWARD VINCENT FITZGERALD ____________________ Appeal 2009-006846 Application 10/364,643 Technology Center 2400 ____________________ Before: LANCE LEONARD BARRY, CAROLYN D. THOMAS, and JAMES R. HUGHES, Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-006846 Application 10/364,643 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. Â§ 134 from a rejection of claims 1- 27. We have jurisdiction under 35 U.S.C. Â§ 6(b). INVENTION The Appellants describe the invention at issue on appeal as "preventing unauthorized recording of electronic media." (Spec. 1.) ILLUSTRATIVE CLAIM 1. A method of preventing unauthorized recording of electronic media comprising: activating a compliance mechanism in response to a client system receiving media content, said compliance mechanism coupled to said client system, said client system having a media content presentation application operable thereon and coupled to said compliance mechanism; controlling a data path of a kernel-mode media device driver of said client system with said compliance mechanism upon detection of a kernel streaming mechanism operable on said client system by diverting a commonly used data pathway of said media content presentation application to a controlled data pathway monitored by said compliance mechanism; and directing said media content from said kernel-mode media device driver to a media device driver coupled with said compliance mechanism, via said data path, for selectively restricting output of said media content. REFERENCES AND REJECTIONS Cragun Schreiber US 6,161,112 US 6,298,446 Dec. 12, 2000 Oct. 2, 2001 Appeal 2009-006846 Application 10/364,643 3 Claims 1-13 and 15-27 stand rejected under 35 U.S.C. Â§ 102(e) as being anticipated by Schreiber. Claim 14 stands rejected under Â§ 103(a) as being unpatentable over Schreiber and Cragun. CLAIM GROUPINGS Based on the Appellants' arguments, we will decide the appeal of claims 1-13 and 15-27 on the basis of claim 1 alone, see 37 C.F.R. Â§ 41.37(c)(1)(vii), and the rejection of claim 14 separately. CLAIMS 1-13 AND 15-27 The issue before us is whether the Examiner erred in finding that Schreiber activates a compliance mechanism in response to a client system receiving media content as required by representative claim 1. Appeal 2009-006846 Application 10/364,643 4 FINDINGS OF FACT Schreiber describes its invention as "a method and system for enabling a user to view protected image data using his web browser without being able to copy it." (Col. 3, ll. 2-4.) Figure 1 of the reference follows in pertinent part. "FIG. 1 is a simplified illustration of [the] system . . . of [Schreiber's] invention . . . ." (Col. 5, ll. 10-13.) ANALYSIS "It is axiomatic that anticipation of a claim under Â§ 102 can be found only if the prior art reference discloses every element of the claim, and that anticipation is a fact question . . . ." In re King, 801 F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). Here, the Examiner findins that "Schreiber discloses that if [image] content is not protected, then the web browser processes the content 'in the normal fashion' (i.e. without the use of the plug-in) (Col. 10, lines 3-5)." Appeal 2009-006846 Application 10/364,643 5 (Ans. 13.) The Appellants argue "that it is much more probable that the web browser plug-in is active when media content identified as being 'protected' is encountered by the web browser." (Reply Br. 4.) Referring to its Figure 1, supraÂ¸ Schreiber includes the following explanation of how its system and method process protected image content. [A] protected image 108 referenced within web page 104 is handled differently. A modified web page 120 is generated by a web page modifier 122. Specifically, the reference to protected image 108 in web page 104 is modified by web page modifier 122 so as to reference substitute data 124. Substitute data 124 preferably corresponds to an image that is visually identical or substantially similar to protected image 108. When substitute data 124 corresponds to an image that is visually identical to protected image 108, it is preferably an encrypted version of the protected image data. (Col. 10, ll. 6-17.) The reference's "web browsers 112 may include software that functions as a substitute data processor 126, in the form of a browser plug-in . . . . Such a substitute data processor is capable of rendering an encrypted image" (Id. at ll. 25-29.) In other words, the substitute data processor 126 is embodied as a plug-in for the web browser 112. Schreiber's "FIG. 2 is a simplified flowchart of [its] method for protecting digital images . . . ." (Col. 5, ll. 14-16.) The reference describes the method as follows. [A]t step 224 the server sends an HTTP [hypertext transfer protocol] response containing the substitute data to the client computer. At step 226 the client computer receives the HTTP response containing the requested substitute data, and at step 228 the client computer processes the substitute data using a substitute data processor, as described hereinabove with respect to FIG. 1, and renders the web page. Appeal 2009-006846 Application 10/364,643 6 (Col. 11, ll. 59-65.) We find Appellantsâ€™ argument unpersuasive, and agree with the Examinerâ€™s findings concerning Schreiber. More specifically, because the substitute data processor 126 does not process the substitute data (i.e., the encrypted version of the protected image data) until the data are sent to the client computer, we agree with the Examiner's finding that "the web browser plug-in is not active until [the encrypted] media content . . . is received." (Ans. 13.) Therefore, we conclude that the Examiner did not err in finding that Schreiber activates a compliance mechanism in response to a client system receiving media content as required by representative claim 1. CLAIM 14 The issue before us is whether the Examiner erred in finding a reason to combine teachings from Schreiber and Cragun to reject claim 14. FINDINGS OF FACT Cragun describes its invention as "improvements that give [a] user more control over information presented on a web page . . . ." (Col. 2, ll. 3- 4.) ANALYSIS The presence or absence of a reason "to combine references in an obviousness determination is a pure question of fact." In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir. 2000) (citation omitted). "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l v. Teleflex Inc., Appeal 2009-006846 Application 10/364,643 7 550 U.S. 398, 416 (2007). More specifically, "when a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious." Id. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). Here, we agree with the Examiner's finding that "Cragun discloses a web page presentation control mechanism that operates within a web browser that allows users of the web browser to select various settings as default (Col. 9, lines 38-47)." (Ans. 12.) We also agree with his following conclusion and supporting findings. It would have been obvious to one of ordinary skill in the art at the time the invention was made to allow the users of the web browser in Schreiber to set as default various ways to access and store received digital data viewed by the web browser in order to allow the user more control over the web data that they receive through their web browsers as taught by Cragun (Col. 1, line 56 - Col. 2, line 7). (Ans. 12-13.) The Appellants make the following argument. [T]he rejection improperly results from modifying the present taught methodology of both Schreiber and Cragun to teach the claimed feature when both Schreiber and Cragun solve the same problem utilizing different solutions and, as such, one of ordinary skill would not modify the teachings of Schreiber or Cragun to the claimed feature, as the claimed feature is a novel method of addressing problems already addressed by both Schreiber and Cragun. (App. Br. 14.) The argument misses the fact that Examiner does not rely on Cragun to solve the same problem as Schreiber. He relies on the former reference Appeal 2009-006846 Application 10/364,643 8 only for the teaching of default settings and advantages associated therewith, neither of which is contested. "Silence implies assent." Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 572 (1985). Therefore, we conclude that the Examiner did not err in finding a reason to combine teachings from Schreiber and Cragun to reject claim 14. DECISION We affirm the rejections of claims 1 and 14 and that of claims 2-13 and 15-27, which fall with claim 1. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(1)(iv) (2010). AFFIRMED tkl