Ex Parte Stewart et al

Patent Trials and Appeals Board

Feb 5, 2016

13077242 - (D) (P.T.A.B. Feb. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/077,242 03/31/2011
102383 7590 02/09/2016
Trellis IP Law Group/ Sony Corp,
1900 Embarcadero Road, Suite 109
Palo Alto, CA 94303
FIRST NAMED INVENTOR
Russell Stewart
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.
020699-106800US 5223
EXAMINER
SHIBRU, HELEN
ART UNIT PAPER NUMBER
2484
NOTIFICATION DATE DELIVERY MODE
02/09/2016 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):
docket@trellislaw.com
megan@trellislaw.com
sherry@trellislaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUSSELL STEW ART and TIMUR INSEPOV
Appeal2014-001661
Application 13/077 ,242 1
Technology Center 2400
Before THU A. DANG, CARLL. SILVERMAN, and
NORMAN H. BEAMER, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20. Final Act. 4. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
The invention relates to controlling distribution of media content to
authorized users. Abstract.
11 The real party in interest is identified as Sony DADC US Inc. App. Br.
3.
Appeal2014-001661
Application 13/077,242
Claim 1, reproduced below, is exemplary of the subject matter on
appeal:
1. A method of controlling distribution of content to a viewer, the
method comprising:
sending authentication instructions from a server to a disc
player having a disc inserted therein, wherein the disc comprises
media content without a plurality of files that are required by the disc
player for playback of the media content;
determining if the disc in the disc player is valid by comparing
information received from the disc player against information stored
in a database;
receiving viewer verification information from the disc player
to determine if the viewer is authorized to view the playback of the
media content on the disc;
sending an error indication if the disc is determined to be
invalid and/ or the viewer is determined to be unauthorized; and
sending the plurality of files that are required for the playback
of the media content from the server to the disc player if the viewer is
authorized and the disc is valid.
App. Br. 21 (Claims Appendix).
THE REJECTIONS
Claims 1-20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Kutaragi et al. (US PG PUB 2008/0098118 Al; published
Apr. 24, 2008). Final Act. 4.
2
Appeal2014-001661
Application 13/077,242
ANALYSIS
Appellants and the Examiner dispute whether Kutaragi discloses the
claim 1 limitation:
sending the2 plurality of files that are required for the playback of the
media content from the server to the disc player if the viewer is
authorized and the disc is valid.
App. Br. 11-16; Final Act. 5; Ans. 8-10.
The Examiner finds Kutaragi Figures 4 and 5, steps 113 and 209
respectively, disclose the disputed limitation. Final Act. 5. As described in
the Figure 4 accompanying text, upon verification, a "read-permitted
command is received" and the entertainment apparatus and step 113
executes the program stored in the CD-ROM. Kutaragi i-fi-173, 74. Similarly,
as described in the Figure 5 accompanying text, upon verification, step 209
transmits a "program execution permission command" to the entertainment
apparatus. Kutaragi i-fi-175, 80, 86.
Appellants argue:
[regarding step 113 of Figure 4], A permission command, authorizing
the user to read content already present on the disc, is not equivalent
to a plurality of files required for playback of the media content
from the server to the disc player, as the claims require. So neither
sending nor receiving such a read permission command satisfies the
corresponding claim limitations.
App. Br. 13.
2 Antecedent basis for this limitation is recited in the prior limitation
"wherein the disc comprises media content without a plurality of files that
are required by the disc player for playback of the media content."
3
Appeal2014-001661
Application 13/077,242
Similarly, step 209 of Figure 5, also cited by the Examiner, is .
merely the transmission of a "program execution permission
command" from the server to the authenticated device containing the
authenticated disc. Sending a permission command to allow a
program already present on the disc to be executed is not equivalent to
sending a plurality of files required for playback of the media content
from the server to the disc player, as the claims require.
App. Br. 14.
We are persuaded by Appellants' arguments that Kutaragi steps 113
and 209 do not disclose the disputed limitation as required for anticipation.
In particular, Kutaragi does not disclose "sending ... files that are required
for playback of the media content from the server ... " We are also
persuaded by Appellants' argument that, while the Examiner finds Kutaragi
discloses transmission of status information and requested data, "data
corresponding to the disk to the computer," and the information to be sent is
"not limited," the Examiner does not show Kutaragi discloses the disputed
limitation as required for anticipation. App. Br. 15; Final Act. 2-3 (citing
i-fi-f 18, 24, 118, 119, 102, Abstract); Ans. 9-10. A claim is anticipated only
if each and every element as set forth in the claims is found, either expressly
or inherently described in a single prior art reference, and arranged as
required by the claim. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814
F.2d 628, 631 (Fed. Cir. 1987).
The Examiner's findings of dictionary definitions for the terms "data,"
"file," "command," and "information" and applications of these definitions
to statements made by Appellants and Kutaragi citations do not cure the
deficiency that Kutaragi does not disclose the disputed limitation. Ans. 8-
10.
4
Appeal2014-001661
Application 13/077,242
In view of the above, we do not sustain the rejection of claim 1, and
independent claims 9, 15, and 18 as these claims recite substantially the
same limitation discussed above. App. Br. 16. We also do not sustain the
rejection of dependent claims 2-8, 10-14, 16, 17, 19, and 20. Cf In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious. ").
DECISION
We reverse the Examiner's decision rejecting claims 1-20.
REVERSED
5