Ex Parte Scheer et alDownload PDFPatent Trial and Appeal BoardDec 27, 201612915434 (P.T.A.B. Dec. 27, 2016) Copy Citation 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. 12/915,434 10/29/2010 Fred SCHEER 20100692 7607 7590 12/29/201625537 VERIZON PATENT MANAGEMENT GROUP 1320 North Court House Road 9th Floor ARLINGTON, VA 22201-2909 EXAMINER POPHAM, JEFFREY D ART UNIT PAPER NUMBER 2491 NOTIFICATION DATE DELIVERY MODE 12/29/2016 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): patents @ verizon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRED SCHEER, DIEGO S. ROZENSZTEJN, GAURAV MEHTA, and JACK JIANXIU HAO1 Appeal 2016-003420 Application 12/915,434 Technology Center 2400 Before ALLEN R. MacDONALD, JON M. JURGOVAN, and PHILLIP A. BENNETT, Administrative Patent Judges. BENNETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 3—11, and 13—27, which are all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants’ Appeal Brief (App. Br.) identifies the real party in interest as Verizon Communications Inc. and its subsidiary companies. App. Br. 3. Appeal 2016-003420 Application 12/915,434 CLAIMED SUBJECT MATTER The claims are directed to a content download manager. Claim 1, reproduced below with disputed limitations emphasized, is illustrative of the claimed subject matter: 1. A method, comprising: presenting, via a display associated with a mobile device, a user interface via which a user can specify a set of download policies, where the user interface includes information regarding a network restriction policy, a time restriction policy, an event restriction policy, and a location restriction policy; receiving, from the user and via the user interface, input defining the set of download policies; storing, in a memory associated with the mobile device, the set of download policies, where the set of download policies include at least two of: the network restriction policy, wherein the network restriction policy comprises information relating to a type of network connection for a download operation, the time restriction policy, wherein the time restriction policy comprises information relating to a time at which to commence a download operation, the event restriction policy, wherein the event restriction policy comprises information relating to an occurrence of a particular event before commencing a download operation, or the location restriction policy, wherein the location restriction policy comprises information relating to a particular geographic location or geographic region before commencing a download operation; receiving, by a processor of the mobile device, an instruction to download particular content; determining, by a processor of the mobile device and after receiving the instruction, whether the set of download policies permits the particular content to be downloaded immediately, providing, via the user interface and in response to the determining: 2 Appeal 2016-003420 Application 12/915,434 a notification that the download operation is scheduledfor a later time based on the download policies, a first option to override the set of download policies and download the particular content immediately, and a second option to change the set of download policies, in response to determining that the set of download policies does not permit the particular content to be downloaded immediately after receiving the instruction; downloading immediately, by a processor of the mobile device, the particular content when the set of download policies permits the particular content to be downloaded immediately, or based on selection of the first option via the user interface; obtaining, by a processor of the mobile device and in response to downloading the particular content, a license for the particular content; and providing, by a processor of the mobile device and after obtaining the license, a notification that the particular content is available. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Oliver US 7,302,591 B2 England US 2003/0014655 A1 Jones US 2008/0065782 A1 Koren US 2010/0235473 A1 Srinivasan US 2011/0231517 A1 REJECTIONS Claims 1, 3—8, 11, 13—19, 26, and 27 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Koren, England, Srinivasan, and Jones. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Koren, England, Srinivasan, Jones, and Oliver. Nov. 27, 2007 Jan. 16, 2003 Mar. 13, 2008 Sept. 16,2010 Sept. 22,2011 3 Appeal 2016-003420 Application 12/915,434 Claims 20-25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Koren, Oliver, and Jones. Claims 20 and 22—25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Koren, Srinivasan, and Jones. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Koren, Srinivasan, Jones, and Oliver. ISSUES FOR DECISION (1) Has the Examiner committed error by improperly evaluating claim limitations in isolation as alleged by Appellants? (2) Has the Examiner erred in finding the cited combination teaches, suggests, or otherwise renders obvious the limitation of “determining . . . after receiving the instruction, whether the set of download policies permits the particular content to be downloaded immediately,” as recited in claim 1? (3) Has the Examiner erred in finding the cited references teach, suggest, or otherwise render obvious the limitation of: [Providing ... in response to the determining ... a notification that the download operation is scheduled for a later time based on the download policies, a first option to override the set of download policies and download the particular content immediately, and a second option to change the set of download policies, in response to determining that the set of download policies does not permit the particular content to be downloaded immediately after receiving the instruction, as recited in claim 1? (4) Has the Examiner erred in finding the cited references teach, suggest, or otherwise render obvious the limitation of “obtaining ... in response to downloading the particular content, a license for the particular content,” as recited in claim 1? 4 Appeal 2016-003420 Application 12/915,434 (5) Has the Examiner erred in finding the references properly combinable? (6) Has the Examiner erred in finding the cited combination teaches, suggests, or otherwise renders obvious the limitation of “receiving, from the user, selection of the first option to override the set of download policies,” as recited in claim 5? (7) Has the Examiner erred in combining Oliver with the remaining references to reject claims 9 and 10? ANALYSIS First Issue In rejecting claim 1, the Examiner finds the combined teachings of Koren, England, Jones, and Srinivasan render claim 1 obvious. Final Act. 15—23. In some instances, the Examiner found that certain claim limitations were met by more than one of the references. For example, the Examiner found each of Jones, Koren, and Srinivasan teaches the first “determining” step recited in claim 1. Similarly, the Examiner found both Jones and Srinivasan teach the first “providing” limitation recited in claim 1. Appellants object to these findings, contending the Examiner has improperly examined the features of claim 1 in a piecemeal manner, thereby precluding the establishment of prima facie obviousness. App. Br. 11—12. More specifically, Appellants contend the Examiner’s obviousness analysis is contrary to the guidance provided in MPEP § 2106 that states the claim as a whole must be considered.2 App. Br. 12. According to Appellants, the Examiner “is improperly dissecting the invention recited in claim 1 into 2 The passage cited by Appellants is actually found at MPEP § 2103(I)(c). 5 Appeal 2016-003420 Application 12/915,434 discrete elements and evaluating the elements in isolation.” App. Br. 12. Appellants further contend that rather than addressing features as a whole, the Examiner picks and chooses from various unrelated portions of Koren, England, Srinivasan, and Jones to reconstruct Appellants’ invention based on hindsight. App. Br. 12. Citing Net Money in, Inc. v. Verisign Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008), Appellants contend the Federal Circuit has held a prior art reference must combine or arrange the limitations in the same way as the claimed invention without the need for picking, choosing, and combining the various disclosures not directly related to each other by the teachings of the prior art reference. App. Br. 13. We are not persuaded the Examiner has improperly analyzed the prior art as alleged by Appellants. In our view, the Examiner provided detailed findings and explanations regarding how the limitations of the claims were found in the relevant prior art references. See, e.g., Final Act. 15—23; Ans. 2—56. Appellants’ cited authorities do not support this position. The passage from the MPEP cited by Appellants relates to analysis performed with respect to patent eligibility under 35 U.S.C. § 101, and is not pertinent to questions of obviousness.3 Moreover, the Net Moneyin case cited for the proposition that it is improper to pick and choose from among unrelated embodiments within a reference is an anticipation case, and does not stand for any proposition regarding a proper obviousness analysis. In rejecting the claims under Section 103, the Examiner needed only to show that each claim limitation was taught or suggested by at least one of the cited prior art references, and that the prior art references are properly combinable. Here, 3 The original passage quoted in Appellants’ Brief appeared in the Supreme Court’s patent eligibility decision in Diamond v. Diehr, 450 U.S. 175, 188— 89 (1981), and was not related to any obviousness issue. 6 Appeal 2016-003420 Application 12/915,434 the Examiner chose to do more, and we do not find error in this approach. Appellants identify no authority, nor are we aware of any, that holds it is inappropriate to find a claim limitation is met by more than one reference in an obviousness combination. If anything, the fact that various claim limitations are taught in more than one reference in the cited combination tends to weigh in favor of obviousness and not against it. Second Issue The Examiner found the limitation of “determining, by a processor of the mobile device and after receiving the instruction, whether the set of download policies permits the particular content to be downloaded” taught by three different prior art references—Koren (Final Act. 16), Srinivasan (Final Act. 20), and Jones (Final Act. 21). Appellants contend that none of the references relied upon by the Examiner disclose this limitation. App. Br. 14—18. With respect the Koren, Appellants present two arguments. First, Appellants argue because the Examiner does not find that Koren discloses the recited “download policies” in preceding limitations, it cannot disclose the “determining” limitation, “since by the Examiner’s own admission, Koren does not disclose or suggest the features upon which the determining feature is based.” App. Br. 15. We are not persuaded of Examiner error by this argument. Appellants seem to argue that it is impossible for a reference to disclose a claim limitation unless it also discloses all limitations providing antecedent basis for the limitation. We are aware of no such rule, nor do Appellants cite any authority supporting such a rule. Accordingly, the mere fact that Koren does not disclose earlier claim limitations relating to download policies does not preclude a finding that Koren teaches “determining, by a processor of the 7 Appeal 2016-003420 Application 12/915,434 mobile device and after receiving the instruction, whether the set of download policies permits the particular content to be downloaded.” Appellants also argue that any teaching of the “determining” is not found in the cited portions of Koren. The Examiner finds Koren teaches this claim limitation at paragraphs 49, 125—26, 136—39, 176—84, and 195. Final Act. 16; Ans. 16—17. Appellants assert the various portions cited by the Examiner merely describe a download manager that is responsible for determining the order of download requests. App. Br. 15. According to Appellants, “[tjhese portions of Koren do not disclose or suggest determining, by a processor of the mobile device and after receiving the instruction, whether the set of download policies permits the particular content to be downloaded immediately, as required by claim 1.” App. Br. 15. We agree with the Examiner that Koren teaches the “determining” step. In paragraphs 176—184, Koren teaches that a policy manager 822 and a download manager 818 are stored on a mobile device. Koren || 176, 178. As such, the operations of the policy manager and download manager are executed by a processor of the mobile device. Koren further teaches the policy manager “is responsible for determining which of a set of competing download requests will be executed.” Koren 1176. This description demonstrates that the policy manager makes its determinations after receiving instructions to download content. Koren further teaches the policy manager uses “business rules that take into account [inter alia] the relative priority of each content object, as determined by the content provider.” Koren 1176. Because these “business rules” assign priority to how content objects are downloaded, they would have been understood as “download 8 Appeal 2016-003420 Application 12/915,434 policies” by a person of ordinary skill in the art. Koren also teaches that “[i]n addition to the standard functionality provided by Android for immediate downloads, the download manger 818 includes the ability to delay downloads until specific conditions occur.” Koren 1179. This description indicates that the download manager makes a determination regarding whether an object should be downloaded immediately (which is the default behavior), or if a policy of the policy manager restricts the download based on conditions. Accordingly, the operation of the download manager and policy manager in Koren teaches “determining, by a processor of the mobile device and after receiving the instruction, whether the set of download policies permits the particular content to be downloaded immediately.” Because Koren teaches the “determining” step, we do not reach Appellants arguments that Jones and Srinivasan do not teach the “determining” step. Third Issue Appellants also argue the cited combination does not teach: providing ... in response to the determining . . . a notification that the download operation is scheduled for a later time based on the download policies, a first option to override the set of download policies and download the particular content immediately, and a second option to change the set of download policies, in response to determining that the set of download policies does not permit the particular content to be downloaded immediately after receiving the instruction. The Examiner finds Srinivasan teaches everything but the first option and Jones teaches the entire “providing” limitation, citing the Abstract and paragraphs 10-12 and 36—38. Final Act. 20-22; Ans. 25—30. With respect to Jones, Appellants contend Jones merely discloses the changing of a 9 Appeal 2016-003420 Application 12/915,434 download state and download status of media items in a download list. App. Br. 19-20. According to Appellants, these teachings do not provide the required notifications and/or options recited in the “providing” limitation. We are not persuaded by Appellants’ contentions. At Figure 3, Jones provides an example of “a notification” that “the download operation is scheduled for a later time based on download policies” recited in claim 1. More specifically, Figure 3 shows a list of files for downloading in which one of the download has a status of “waiting” while other download are proceeding concurrently. Jones further teaches “two or more media items may be concurrently downloaded” and that downloads may be “according to the ascertained priority.” Jones 110. This description teaches that the files that are “waiting” are placed in the queue “based on download policies.” Jones also teaches the recited “first option” and the recited “second option.” Jones discloses “[i]t may also be desirable to change the download status of one or more of the media items in the list.” Jones 138. Jones indicates “the user may choose to start the downloading of media items that are eligible to be downloaded (e.g., those that have not yet been downloaded or that have been paused during downloading).” Jones 138. Because the user is able to force downloading of a file that is currently queued due to the download policies, Jones teaches “a first option to override the set of download policies and download the particular content immediately.” Jones also teaches that a user is given the option to “change the order in which the media items in the list (or a subset thereof) are downloaded” from the default policy of a top-down order. Jones 137. Jones describes the order may be changed using a “drag-and-drop operation to move the media items within the list.” The drag-and-drop operation provides the recited 10 Appeal 2016-003420 Application 12/915,434 “second option to change the set of download policies” recited in claim 1. Jones also teaches that this drag-and-drop operation allows “the order in which media items are placed in a corresponding queue [to be] modified accordingly.” Because this option is provided to the user when the file download list is presented and includes media items waiting to download, it necessarily provides it “in response to determining that the set of download policies does not permit the particular content to be downloaded immediately after receiving the instruction.” As such, Jones also teaches the recited “second option.” In sum, we agree with the Examiner that Jones teaches the recited “providing” limitation, including the recited notification, the first option, and the second option, and are not persuaded by Appellants’ arguments to the contrary. Because the Examiner correctly found Jones teaches this claim limitation, we need not consider whether Srinivasan also teaches this claim limitation. Fourth Issue Appellants also challenge the Examiner’s finding the cited combination teaches the limitations “obtaining, by a processor of the mobile device and in response to downloading the particular content, a license for the particular content,” and “providing . . . after obtaining the license, a notification that the particular content is available,” as recited in claim 1. The Examiner finds England teaches both the “obtaining” and the “providing” limitations at paragraphs 9-17, 114, 133, 142—144, and 162— 169. The Examiner also finds Srinivasan and Koren teach the “providing” limitation. Final Act. 17—20. Appellants argue England does not teach these limitations. App. Br. 20-21. More specifically, Appellants argue the cited portions of England “merely disclose a DRM system and the processes for 11 Appeal 2016-003420 Application 12/915,434 obtaining a valid license, decryption key, description of rights, or digital signature.” App. Br. 21. We are not persuaded the Examiner has erred in finding England teaches the “obtaining” and “providing” limitations. Appellants argue England merely discloses the operation of a generic DRM system. The problem with Appellants’ argument is that it does not explain how England’s allegedly generic DRM system is different from the “obtaining” step and the “providing” step recited in claim 1. England teaches a system in which a license is needed to render downloaded content. England 1114. After a content file has been downloaded, England teaches “the DRM system 32 either locates a valid enabling license 16 in the license store ... or ... performs the license acquisition function.” England 1133; see also 11142- 144. Accordingly, we agree with the Examiner’s finding England teaches obtaining a license for the particular content in response to downloading the content. England further teaches the “providing” step. Paragraphs 162—169 of England describe the download and installation process for an acquired license to an item content. Paragraph 169 particularly states “[u]pon receipt, the requesting DRM system 32 preferably automatically places the received digital license 16 in the license store 38 (step 721).” The placement of the digital license in the license store notifies the system that the licensed content is available for rendering on the device. Thus, England also teaches “providing, by a processor of the mobile device and after obtaining the license, a notification that the particular content is available.” Because we agree with the Examiner’s finding England teaches these claim limitations, we do not address Appellants’ arguments regarding whether Koren and Srinivasan teach these limitations. 12 Appeal 2016-003420 Application 12/915,434 Fifth Issue Appellants also challenge the combinations made by the Examiner in various respects. Appellants first argue that Koren and England are not properly combinable because England is not analogous art. App. Br. 23; Reply Br. 6—7. The Examiner finds Koren and England are analogous art because they are both “at least in the fields of digital content download and usage, as well as digital content security.” Ans. 38—39. The Examiner further finds Koren specifically mentions the use of DRM in determining whether content may be consumed. Ans. 39 (citing Koren 174). We agree with the Examiner that Koren and England are analogous art. Prior art is analogous if the art is from the same field of endeavor, regardless of the problem addressed, or, if not within the same field of endeavor, still is reasonably pertinent to the particular problem addressed. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Here, both Koren and England pertain to content download management. Appellants’ application also pertains to content download management, as evidenced by the title of the invention. Spec. 1. Appellants seem to suggest Koren and England cannot be analogous unless they are concerned with precisely the same problem within the field of content download management. This is not correct. Regardless of the problems addressed, by being in the same field of endeavor—content download management—Koren and England quality as analogous art, and we are not persuaded the Examiner’s finding is in error. Appellants further argue “[n]o objective motivation for combining the divergent disclosures of Koren, England, Srinivasan and Jones to somehow read on the features of claim 1 has been established or demonstrated in the Final Office Action.” App. Br. 24. This argument does not address the 13 Appeal 2016-003420 Application 12/915,434 specific findings of the Examiner setting for the reasons for combining each of the references. See, e.g., Final Act. 18 (providing rationale for combining England), 21 (providing rationale for adding Srinivasan), 23 (providing rationale for adding Jones); see also Ans. 41—45 (providing additional detailed explanation not addressed in Appellants’ Reply Brief). Because Appellants do not apprise us of specific error in the findings made by the Examiner, we are not persuaded that the combination of references has been improperly made. Sixth Issue Claim 5 recites: 5. The method of claim 1, further comprising: receiving, from the user, selection of the first option to override the set of download policies; and downloading the particular content in response to receiving selection of the first option to override the set of download policies. App. Br. 38 (Claims App’x). In rejecting claim 5, the Examiner finds the limitations taught by Jones, citing the Abstract and paragraphs 10—12 and 36—38. Final Act. 24. Appellants challenge this finding, arguing Jones does not teach these limitations because “Jones, in contrast, is directed to the prioritization of a media download list and not download policies as alleged by the Examiner.” App. Br. 28. We disagree with Appellants. As we explained in connection with the Third Issue supra, Jones teaches “the user may choose to start the downloading of media items that are eligible to be downloaded (e.g., those that have not yet been downloaded or that have been paused during downloading).” Jones 138. The fact that the user is provided this choice indicates that an option is provided for doing so, Jones therefore teaches “receiving, from the user, selection of the first 14 Appeal 2016-003420 Application 12/915,434 option to override the set of download policies.” Moreover, because Jones’ user is able to force downloading of the file using “a user-interface such as a button or drop-down menu” (Jones 1 38), it also teaches “downloading the particular content in response to receiving selection of the first option to override the set of download policies,” as required by claim 5. Seventh Issue Appellants challenge the propriety of combining Oliver with the remaining references to reject dependent claims 9 and 10.4 In rejecting these claims, the Examiner finds Oliver teaches the limitations recited in claims 9 and 10, and further finds a skilled artisan would had a reason to make such combination: It would have been obvious to one of ordinary skill in the art at the time of applicant's invention to incorporate the access control techniques of Oliver into the content management system of Koren as modified by England, Srinivasan, and Jones in order to allow the system to provide additional download restrictions, such as age restrictions, location restrictions, and the like, thereby providing additional flexibility in the system. Final Act. 41. Appellants argue the Examiner’s reliance on Oliver is misplaced. More specifically, Appellants argue “Oliver is concerned with controlling access to playable content (Oliver at Abstract), which is not related to any of the other four references.” App. Br. 29. We are not persuaded that the Examiner has erred in combining Oliver with the remaining references. Appellants’ single sentence of 4 Appellants also contend the Examiner erred in rejecting these claims for the same reasons they expressed with respect to claim 1. As these reasons are not separate arguments for patentability, we do not address them here. 15 Appeal 2016-003420 Application 12/915,434 argument is conclusory, and this brief argument provides no specific explanation of why Oliver “is not related to any of the other four references.” To the extent Appellants are arguing Oliver is not analogous art, we disagree, as like the remaining references, Oliver is broadly directed to content download management. Accordingly, we do not find error in the Examiner’s rejection of claims 9 and 10. Remaining Claims and Arguments Although Appellants assert independent claim 20 is of different scope than claim 1, it relies on substantially similar arguments as those discussed above. App. Br. 30-32. Because we did not find those arguments persuasive, we are not apprised of error in the Examiner’s rejection of claim 20. Similarly, in asserting Examiner error with respect to claim 21, Appellants present substantially similar arguments as those addressed in connection claims 9 and 10. Because we did not find those arguments persuasive, we are not apprised of error in the Examiner’s rejection of claim 21. Appellants do not set forth any separate arguments for patentability of claims not specifically addressed above. As such, the remaining claims fall with their respective base claims. 37 C.F.R. § 41.37(c)(l)(iv). DECISION The Examiner’s rejection of claims 1, 3—11, and 13—27 under 35 U.S.C. § 103(a) is affirmed. 16 Appeal 2016-003420 Application 12/915,434 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 17 Copy with citationCopy as parenthetical citation