Ex Parte Rodgers et al

Board of Patent Appeals and Interferences

Feb 27, 2012

10202729 (B.P.A.I. Feb. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER JAMES RODGERS,
MATTHEW MURRAY WILLIAMSON, and RUSSELL PERRY
____________

Appeal 2010-005142
Application 10/202,729
Technology Center 3600
____________

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

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005142
Application 10/202,729

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1 to 19 and 31 to 54. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 is illustrative:
1. A method of distributing content comprising the steps
of:
(i) a first consumer receiving a first copy of the content
with first licen[s]e data, including status data indicative of the
legitimate nature of the first copy, attached thereto, wherein the
status data indicates either that a user has full and legitimate use
of a copy of the content, temporary and legitimate use of the
copy of the content, or whether the user is not a legitimate user
of the copy of the content;
(ii) the first consumer generating second licen[s]e data
for the content and transmitting the second licen[s]e data to a
second consumer;
(iii) the second consumer using a second copy of the
content without restriction on a player device until connecting
the player device to an information technology network and
communicating with a commercial distributor connected to the
information technology network;
(iv) the second consumer sending to the commercial
distributor of the content at least sufficient of the second
licen[s]e data to enable identification of: (a) the content to
which it relates, and (b) the status of the second consumer with
respect to the content;
(v) determining by the commercial distributor whether
the second consumer meets any conditions required by the
commercial distributor for use of a copy of the content; and
(vi) upon a determination that the conditions are met, the
commercial distributor sending to the second consumer
replacement second licen[s]e data, including at least
replacement status data to update said second licen[s]e data
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indicating that the second consumer is entitled to use the
content, wherein the player device is instructed during the
communication with the commercial distributor to remove the
second copy of the content from the player device if the second
consumer fails to meet any of the conditions required by the
commercial distributor for use of a copy of the content.

Appellants appeal the following rejections:
1. Claims 40 to 54 under 35 U.S.C. § 101 because the claimed invention
is directed to non-statutory subject matter.
2. Claims 1 to 19 and 31 to 54 under 35 U.S.C. § 103(a) as unpatentable
over Stefik (US 5,634,012, iss. May 27, 1997) in view of Kobata (US
2002/0077986 A1, pub. Jun. 20, 2002).

ANALYSIS
Non-statutory subject matter
We reverse this rejection. Although the law on patent-eligibility for
process claims under 35 U.S.C. § 101 has undergone significant clarification
since the mailing of the Answer (November 12, 2009), it remains the case
that failing to satisfy the machine-or-transformation test is a factor weighing
against the patent eligibility of a process claim. See Interim Guidance for
Determining Subject Matter Eligibility for Process Claims in View of Bilski
v. Kappos, 75 Fed. Reg. 43,922, 43,926 (Jul. 27, 2010).
The Examiner did not provide a full explanation as to why the process
recited in the claims fails to pass the machine-or-transformation test. Ans. 3.
The Examiner concludes that “[t]he process steps in claims 40-50 are not
tied to another statutory class nor do they execute a transformation.” Id. at
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3. Stating only that Appellants’ method steps are not tied to a particular
machine and do not execute a transformation, does not provide an analysis to
support this holding. Ans. 5.
Claim 40 recites the steps of sending from a computer to a server and
receiving at the computer from the server. Although, the Examiner
concludes that these steps constitute extra-solution activity, the Examiner
does not provide an analysis as to why these steps constitute extra-solution
activity. This lack of analysis is particularly important because it appears
that the sending and receiving between computer and the server is central to
the process claimed. The Examiner did not make any findings, for example
as to why sending a license for content along with the content and updating
the license to show access is allowed is not substantive subject matter
beyond an abstract concept. Sending and receiving license data tied to the
production of licensed data is critical to securing the licensed data, and so
must be more than insignificant.
Therefore, it is our opinion that the Examiner has failed to establish a
prima facie case of patent-ineligibility under 35 U.S.C. § 101. For this
reason, the rejection is reversed.

Obviousness
We will not sustain this rejection as it is directed to claims 1 to 19 and
31 to 39 because the prior art relied on by the Examiner does not disclose
using a second copy of the content without restriction on a player device.
The Examiner relies on Kobata for teaching this subject matter and directs
our attention to the Abstract and paragraphs [0026] and [0165] to [0168].
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However, these portions of Kobata do not disclose that a second copy is
used without restriction.
We find that the Abstract of Kobata relates to the control of digital
assets. Although a try-before-you-buy marketing approach is mentioned,
there is no mention of using the content without restriction. We find that
paragraph [0026] of Kobata relates to a file protection system and not to the
unrestricted use of content. We also find that paragraphs [0165] to [0168]
relate to digital rights and how those rights can be modified but not to the
unrestricted use of content. This portion of Kobata also discloses the try-
before-you-buy option but states clearly that these rights are restricted to a
period of time or periodic payment.
We will also not sustain this rejection as it is directed to claims 40 to
54 because we agree with the Appellants that the prior art relied on by the
Examiner does not disclose sending from a computer to a server second
license data to enable the identification of the status of the second consumer
with respect to the content. The Examiner does not address the specifics of
these claims and for that reason alone has failed to establish a prima facie
case of obviousness of these claims. In addition, we find that Stefik
discloses that the license data is attached to the content and does not include
identification of the status of the user. We also find that Kobata relates to
the rights in the content rather than the status of the user.

DECISION
The decision of the Examiner is reversed.

REVERSED
Appeal 2010-005142
Application 10/202,729

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