Ex Parte Shuster

Patent Trial and Appeal Board

Aug 19, 2016

13183979 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/183,979 07/15/2011 Brian Mark Shuster
35690 7590 08/23/2016
MEYERTONS, HOOD, KIVLIN, KOWERT & GOETZEL, P,C
P.O. BOX 398
AUSTIN, TX 78767-0398
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.
6657-16602 9449
EXAMINER
FADOK,MARKA
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
08/23/2016 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):
patent_docketing@intprop.com
ptomhkkg@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN MARK SHUSTER
Appeal2014-005965
Application 13/183,979 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, TARA L. HUTCHINGS, and
SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner's
Non-Final decision to reject claims 1, 2, 4--15, and 17-22. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellant, the real party in interest is Intellectual Ventures
Management. Appeal Brief filed December 18, 2013, hereafter "App. Br.," 3.
Appeal2014-005965
Application 13/183,979
BACKGROUND
The invention relates to management of ownership of virtual property.
Specification, hereafter "Spec.," Abstract, i-fi-12, 9. In the invention, virtual
property is maintained on a system, and access to the virtual property on that
system is permitted to users. Id. i1 8
Representative claim 1 is reproduced from page 18, of the Claims Appendix
of the Appeal Brief (Claims App'x) as follows, with emphasis added to relevant
claim limitations:
1. A method comprising:
maintaining on one or more storage devices a software application
that is configured to be executed by remote computing devices via
networked communications with the one or more storage devices;
maintaining a data structure indicating one or more users that have
rights in the software application;
receiving a software rights transfer indication indicating that rights in
the software application should be transferred from a first user to a second
user; and
in response to receiving the software rights transfer indication,
updating the data structure to indicate that the second user is one of the one
or more users that have rights in the software application and that the first
user is not one of the one or more users having rights in the software
application so that the second user is allowed to access the software
application via one or more networked connections and the first user is not
allowed to access the software application.
The Examiner rejects claims 1, 2, 4, 6-15, 17, and 19-22 under 35 U.S.C.
§ 103(a) as unpatentable over Wiggins2 and Kahn. 3 Claims 5 and 18 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Wiggins, Kahn, and Official Notice.
2 US Patent 5,717,604, issued February 10, 1998.
3 US Patent 6, 135,646, issued October 24, 2000.
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Application 13/183,979
Non-Final Action mailed July 24, 2013, hereafter "Non-Final Act.," 2-10; see also
Examiner's Answer, mailed February 14, 2014, hereafter "Ans.," 2---6.
DISCUSSION
The Appellant argues the rejection of independent claims 1, 9, and 14 on
common issues, using claim 1 as representative. App. Br. 8, 16. The rejection of
the dependent claims is argued on the same basis as the independent claims.4 Id. at
16. We will address the rejections in a similar manner.
The Appellant argues that Kahn does not disclose the claim limitation of
"updating the data structure ... so that the second user is allowed to access the
software application via one or more networked connections and the first user is
not allowed to access the software application." App. Br. 8-14. More specifically,
the Appellant contends that although Khan may provide for secure storage of
records relating to digital objects, it provides that "access to those records may be
allowed to any authorized party on the network." Id. at 10 (citing Kahn 4:49-52).
The Appellant alleges that although the records management system of Kahn may
manage information about digital objects, it does not control access. Id. at 11. The
Appellant also contends that the portions of Kahn relating to copyright registration
and managing compensation that the Examiner relies upon have no relevance to
this claim limitation. Id. at 10-11.
4 In the Reply Brief, the Appellant presents arguments for the first time relating to
claims 2, 10, and 15. Reply Brief, filed April 14, 2014, hereafter "Reply Br.," 7-
10. In the Reply Brief, the Appellant also for the first time argues that Wiggins'
system is a "sharing" license system, and if Wiggins were modified it would also
change its principle of operation. Id. at 6. These arguments could have been
earlier raised and are therefore deemed waived pursuant to 37 C.F.R. §§
41.41(b)(2) and 41.37(c)(l)(iv). See also Hyatt v. Dudas, 551F.3d1307, 1314
(Fed. Cir. 2008).
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Appeal2014-005965
Application 13/183,979
The Appellant also alleges that Kahn does not disclose "users that have
rights in [a] software application" or any transfer of those rights as recited in claim
1 because the disclosures are related to an applicant's application for copyright
registration-and this occurs before ownership, and that ownership may never
come about. App. Br. 11 (citing Kahn 12:57---67, 18:4--16, and Fig. 18).
The Appellant additionally argues that the Examiner has not sufficiently
demonstrated a motivation to combine Wiggins with Kahn. App. Br. 14. The
Appellant contends that Wiggins' system eliminates a network connection, where
Kahn's system is directed to managing digital objects in a network, so there is no
suggestion that it would be desirable to make the combination. Id. at 15.
Upon consideration of the evidence on this record in light of the arguments
advanced by the Appellant, we find that the Appellant has not identified reversible
error in the Examiner's determination that representative claim 1 is obvious. We
add the following for emphasis.
The Examiner finds that Kahn is directed to the management of digital
objects, including the management of compensation for access to and transfer of
rights for them. Ans. 9-11. Kahn, for instance, discloses
Any kind of digital object may be dealt with. Owners of digital
objects may deposit them in a secure manner that both restricts access
and allows for later verification that the deposit has not been altered.
Kahn 4:46-49 (emphasis added).
In response to the requests for rights (e.g., exclusive rights), and after
successful negotiation of rights transfers, requests are issued from the
rights management system to the recordation system via the network,
to record transfers of rights in the digital objects.
Id. at 4:32-36 (emphasis added).
We are not persuaded by the Appellant's arguments that Khan does not
disclose actual access to or transfer of the rights for digital objects because claim 1
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Appeal2014-005965
Application 13/183,979
does not have that requirement. The claim requires that the data structure is
updated to reflect a rights transfer and so that the second user is allowed to access
the software application-so, in other words, the claim limitation is directed to a
second user being allowed to access the software application, but does not require
doing so. Khan also discloses that its system provides for updating the rights to
digital objects, where those rights control access, and those rights include
"exclusive rights," that is, rights granted to a single entity. 5 See Khan, 2:44--47,
4:32-36, 4:46-49, 7:49---60. The Examiner finds that Khan discloses "a data
structure indicating one or more users that have rights in the software application"
and the changing of records to reflect the transfer of those rights and associated
access restrictions. See Ans. 9-11 (citing Khan 8:39--41, 3:20-25, 4:25-35, 4:40-
45, 7 :49---60). We see no error with the Examiner's findings.
We are also not persuaded by the Appellant's arguments regarding the
motivation to combine references. "[A]ny need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed." KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398, 420 (2007). In support of a rationale to combine, the Examiner finds
that Wiggins and Kahn are both drawn to usage rights of sellers and users. Ans. 7.
Given the similar nature of the references, we determine that a sufficient rationale
to combine the references has been demonstrated. As to the Appellant's arguments
that the combination of Wiggins and Kahn is not suggested, we are not persuaded.
The Appellant argues that Wiggins' system eliminates a network connection, and
Kahn's system manages digital objects in a network. App. Br. 15. However, the
5 The Appellant's reference to the "access to those records may be allowed to any
authorized party on the network," (App. Br. 10) refers to records, and not to the
access to the rights themselves.
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Application 13/183,979
Appellant has not directed us to persuasive evidence that one of ordinary skill in
the art would have not combined the teachings of Wiggins and Kahn for improved
operations. KSR, 550 U.S. at 417 ("[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.").
We therefore sustain the rejection of representative claim 1, and
claims 2, 4--15, and 17-22.
SUMMARY
The rejection of claims 1, 2, 4--15, and 17-22 under 35 U.S.C. § 103(a) 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).
AFFIRMED
6