Ex Parte Ta et al

Board of Patent Appeals and Interferences

Feb 18, 2010

10163634 (B.P.A.I. Feb. 18, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte THANH TA,
THOMAS DEMARTINI,
JOSEPH Z. FUNG,
GUILLERMO LAO,
MAI NGUYEN,
BIJAN TADAYON,
VINCENT TIEU,
DUC TRAN,
XIN WANG, and
EDGARDO VALENZUELA
____________
Appeal 2009-008881
Application 10/163,634
Technology Center 3600
___________

Decided: February 18, 2010
___________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, JOSEPH A.
FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-008881
Application 10/163,634

STATEMENT OF THE CASE
Thanh Ta, et al. (Appellants) seek review under 35 U.S.C. § 134
(2002) of a final rejection of claims 1-9, 18-21 and 23-28. Claims 10-17 and
22 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellants claim a system and method for managing use of protected
resources within a system of resources. (Specification: 3)
Claim 1, reproduced below, is representative of the subject matter on
appeal.

1. A method for managing use of protected resources within a system
of resources, said method comprising:
granting access to a protected resource by a principal when pre-
conditions associated with the protected resource and the principal are
satisfied,
wherein the satisfaction of said pre-conditions is only required
before the principal accesses the protected resource;
permitting the principal to continue to access the protected
resource only as long as during-access conditions associated with the
protected resource and the principal are satisfied, said during-access
conditions being distinct from said preconditions,
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wherein the satisfaction of said during-access conditions is only
required after the principal accesses the protected resource and before
the access to the protected resource terminates; and
terminating access to the protected resource by the principal
when a termination event occurs, said termination event comprising
the satisfaction of post-conditions distinct from said during-access
conditions,
wherein the satisfaction of the post-conditions is only required
after the access to the protected resource terminates.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Stefik US 5,629,980 May 13, 1997

The following rejection is before us for review.
The Examiner rejected claims 1-9, 18-21, and 23-28 as being
anticipated under 35 U.S.C. § 102(b) by Stefik.
ISSUE
Have Appellants shown that the Examiner erred in rejecting claims 1-
9, 18-21, and 23-28 as being anticipated by Stefik in that the post-conditions
are distinct from the during-access conditions given that the value(s) of the
loan period and/or copy counts are different in each condition, and thus are
distinct as required by the claims?

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PRINCIPLES OF LAW
Anticipation
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Examiner found with respect to the claim limitations:
“permitting the principal to continue to access the protected resource only as
long as during-access conditions associated with the protected resource and
the principal are satisfied, said during-access conditions being distinct from
said preconditions; wherein satisfying the during-access conditions is only
required after the principal accesses the protected resource and before the
access to the protected resource terminates”; that Stefik discloses this
feature:
During the accessing (col35, lines 66-67), the
system checks to see if the loan period has been
exhausted, and to see if the number of copies to be
loaned is valid, also check to see if number of
copies permitted are valid (column 36, lines 3-14),
if those conditions are satisfied, continue to access
content (column 3 1, lines 59-60). During Access,
different than pre access conditions(pre access:
Satisfies security checks (column 3 1, lines 38-45),
Request is valid (column 35, lines 43-46), During
Access: Loan period is not exhausted (column
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36,3-5), Number of copies in use less than
requested (col 36, lines 8-13)
(Answer 12: Appendix A; Table 1, row 3, col. 2)
2. The Examiner found that Stefik discloses the claim limitation of:
“terminating access to the protected resource by the principal when a
termination event occurs, said termination event comprising the satisfaction
of post-conditions distinct from said during-access conditions, wherein the
satisfaction of the post-conditions is only required after the access to the
protected resource terminates”, in that:
If the loan period is exhausted (termination event), then
the user is deactivated from the system and the content is
erased (post conditions) from the user's memory (column
36, lines 8-14, lines 15-22). A Termination event is when
a loan period exhausted (column 36, lines 15-22).
Interpreting post access conditions as erasing or
removing content from memory, which does not happen
until after the user is deactivated (consistent with
appellant's specification in par. 50, where "a post
condition is the removal of access to the resource after an
exercise limit has been reached, when the limit is reached
the resource is deleted or some other action is taken
which disables or prevents access")
(Answer 12: Appendix A; Table 1, row 6, col.2)
3. Stefik discloses :
The check of the usage rights essentially involves a
determination of whether a right associated with
the access request has been attached to the digital
work and if all conditions associated with the right
are satisfied. If the access is denied, repository 1
terminates the session with an error message, step
106. If access is granted, repository 1 transmits
the digital work to repository 2, step 107. Once
the digital work has been transmitted to repository
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2, repository 1 and 2 each generate billing
information for the access which is transmitted to a
credit server, step 108. Such double billing
reporting is done to insure against attempts to
circumvent the billing process.
Stefik: col.7 ll. 25-36.
4. Stefik discloses
Assuming that the copy count does not equal zero,
the server checks if the copies in use for the
requested right is greater than or equal to any copy
count for the requested right (or relevant parts),
step 1809. If the copies in use is greater than or
equal to the copy count, this indicates that usage
rights for the version of the transaction have been
exhausted. Accordingly, the server terminates the
transaction, step 1805. If the copy count is less
than the copies in use for the transaction the
transaction can continue, and the copies in use
would be incremented by the number of digital
works requested in the transaction, step 1810.
Stefik: col. 31, ll. 52-62
4. Stefik discloses that “[t]he specifications components 1452 are used
to specify conditions which must be satisfied prior to the right being
exercised or to designate various transaction related parameters.” Stefik:
col.18, ll. 33-35.
5. The Examiner found with respect to claims 2 and 3 that “[t]he
system uses digital content such as audio, video, text, or software (column 6,
lines 39-40) and uses rendering devices (means) such as printers to render
the content into its desired form (column 8, lines 23-33).” (Answer 4).
6. The Examiner found with respect to claim 29 that Stefik discloses
a method specification indicating a manner by which the value of the state
variable can be obtained from a device so that the value can be used to
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determine whether the pre-conditions, during-access conditions, and post-
conditions are satisfied in that:
[t]he requester sends the server a message to initiate the
Transfer Transaction. This message indicates the work to be
transferred, the version of the transfer right to be used in the
transaction, the destination address information for placing the
work, the file data for the work, and the number of copies
involved.
The repositories perform the common opening transaction
steps.
The server transmits the requested contents and data to the
requester according to the transmission protocol. If a Next-Set-
Of-Rights has been provided, those rights are transmitted as the
rights for the work. Otherwise, the rights of the original are
transmitted. In either case, the Copy-Count field for the
transmitted rights are set to the number-of-copies requested.
The requester records the work contents, data, and usage rights
and stores the work.
The server decrements its copy count by the number of copies
involved in the transaction.
The repositories perform the common closing transaction steps.
If the number of copies remaining in the server is now zero, it
erases the digital work from its memory.
Stefik: col. 35, ll. 6-29.

ANALYSIS
We affirm the rejection of claims 1-9, 18-21 and 23-28.
Initially, we note that the Appellants argue claims 1, 4, 6-9, 23 and 24
together as a group. Correspondingly, we select representative claim 1 to
decide the appeal of these claims, remaining claims standing or falling with
claim 1.
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Appellants’ arguments against each of the independent claims are based
on perceived deficiencies of Stefik. Inasmuch as Appellants raise the same
issues with respect to each of these claims, we discuss them together,
addressing each of Appellants’ arguments in turn.
A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. See, 37
C.F.R. § 41.37 (c)(1)(vii) (2004)
Appellants argue that:
…Stefik fails to disclose the satisfaction during-
access conditions after principal accesses the
protected resource but before access is terminated,
AND the satisfaction post-conditions only after
access to the protected resource terminates,
wherein the post-conditions are distinct from the
during-access conditions.
(Appeal Br. 7)
We disagree with Appellants’ assertion that Stefik fails to disclose the
required satisfaction of during access and post conditions. We find that the
Examiner made findings that show that Stefik discloses the required
satisfaction of during access and of post-conditions. (FF 1-2). The
Examiner further found that in Stefik either the loan period or copy-count
conditions could be read as the during-access or post conditions. (Answer
12: Appendix A; Table 1, rows 4,5,6), Appellants however argue that the
Examiner has improperly analogized the copy count conditions as equatable
to post-conditions of the invention because “[a]ccess to the resource would
not be granted if the copies in use are greater than the copy count of the
request (1809), since the transaction is otherwise immediately terminated
(1805).” (Appeal Br. 7, 8). We disagree with Appellants because the copy
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count condition is a contingent condition which allows access to the content
“if the copy count is less than the copies in use for the transaction [and thus]
the transaction can continue, and the copies in use would be incremented by
the number of digital works requested in the transaction, step 1810. (FF 4)
Even using one of the loan period or copy-count conditions as both
the during-access or post conditions, we find that both the loan period and
the copy count have different values when taken as access and post
conditions, and hence are distinct as required by the claims.
Regarding claims 25 and 27, Appellants argue that
After careful review of the Office Action of
October 21, 2005, Appellants note that Examiner
fails to distinctly point out the section(s) of the
Stefik reference or other prior art that allegedly
discloses the device recited in independent claim
27. Thus, the Examiner fails to provide support for
a prima facie case of anticipation.
Appeal Br. 10.
We disagree with Appellants because we find that the Examiner has
set forth a comprehensive claim chart (Answer 12) citing to Stefik by
column and line number to the process steps of claim 1 which correspond to
those functions set forth in the means-plus-function recitations in claim 27.
For example, the Examiner found with respect to the granting access
function that Stefik discloses this feature at column 18 lines 33-35. (Answer
12). This section of Stefik discloses that the involved device in Stefik is the
specific component 1452 which is used to specify conditions which must be
satisfied prior to the right being exercised or to designate various transaction
related parameters. (FF 4). We thus find this presentation sufficient to
establish the elements of anticipation against claims 27 especially in light of
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Appellants’ similar type of citing made in their SUMMARY section of the
Brief on pages 4-5 for the required citations for specific elements of the
means plus function language. We therefore sustain the rejection of claims
25 and 27, and claims 26 and 28 which depend therefrom, respectively.
With regard to claims 2 and 3, the Examiner found that “[t]he system
uses digital content such as audio, video, text, or software (column 6, lines
39-40) and uses rendering devices such as printers to render the content into
its desired form (column 8, lines 23-33)”. (FF 5)
Appellants however argue that
When derived resources are derived from protected
content such as an encrypted file, the derived
resources may include, but are not limited to a
clear, unencrypted image and the memory address
of the image. (See Specification: ¶ 22). In this
example, the clear image (a derived resource) is
the resource that can be used for rendering the
protected content. Clearly, this example is
distinguishable from the Examiner's assertion
We disagree with Appellants because Appellants’ Specification
describes, in one scenario the content is in usable form e.g., unencrypted, we
thus chose this scenario to meet the claim limitation where the rendering
devices (printers) can use the data as a derived resource.
Regarding claim 5, this claim recites in pertinent part “said during-
access conditions are applied to said primary resource and said derived
resources.”
Appellants argue first that, conditions are not disclosed as applied to
both a primary and a derived resource in the manner claimed in dependent
claim 5; and second, that usage rights are clearly distinct from conditions,
such as during-access conditions. (Appeal Br. 12).
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We disagree with Appellants, as to the first point. We find that Stefik
would necessarily function such that the conditions which control the
primary source and would inherently control the downstream derived source
because the latter is tied to the conditions of the former. “It is well settled
that a prior art reference may anticipate when the claim limitations not
expressly found in that reference are nonetheless inherent in it. [...] 'Under
the principles of inherency, if the prior art necessarily functions in
accordance with, or includes, the claimed limitations, it anticipates.'” In re
Cruciferous Sprout Lit., 301 F.3d 1343, 1349, (Fed. Cir. 2002) (citations and
internal quotation marks omitted). As to point 2, Appellants’ argument thus
fails because Appellants use of the term “usage rights” is not recited in the
claims. “[A]ppellant's arguments fail from the outset because [] they are not
based on limitations appearing in the claims.” In re Self, 671 F.2d 1344,
1348 (CCPA 1982).
Claim 18 recites in pertinent part
providing a condition specification adapted to
associate conditions with the protected resource to
control the protected resource, said specification
including:
a resource designation indicating the protected
resource that the pre-conditions, during-access
conditions, and post-conditions are associated
with;
a state variable indicating a status of the resource
with respect to the pre-conditions, during-access
conditions, and post-conditions; and
a method specification indicating a manner by
which the value of the state variable can be
obtained from a device so that the value can be
used to determine whether the pre-conditions,
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during-access conditions, and post-conditions are
satisfied.
The Examiner found that status conditions are state variables which
can be obtained from devices as described by Stefik at col.35, lines 6-29.
(Answer 5). We agree with the Examiner. We find that Stefik’s count status
is a state variable in that it conveys information about the machine state.
This is because Stefik discloses a message which includes data about “the
work to be transferred, the version of the transfer right to be used in the
transaction, the destination address information for placing the work, the file
data for the work, and the number of copies involved.” (FF 4).
Appellants however argue that “Stefik does not disclose a method
specification that includes the location of state variables, appropriate
communication protocols, and any parameters needed to obtain the value of
a state variable in the manner claimed in dependent claim 18.”
(Appeal Br. 18). However, the Appellants’ arguments “fail from the outset
because . . . they are not based on limitations appearing in the claims . . .,”
because claim 18 does not recite “appropriate communication protocols”. In
re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appellants further argue that the “method specification can include
the location(s) where values of state variables are stored (such as a remote
server that manages a condition). (Appeal Br. 14). However, we find that
Stefik at column 35 lines 6-29 similarly discloses a server, a location, at
which in response to a message to initiate the Transfer Transaction, the
count status is decremented (FF 6). In light of the breadth of the claim, the
Appellants’ arguments are not persuasive as to error in the rejection.
Appellants’ arguments as to claim 21 rely on those asserted for claim
18 which found unpersuasive.
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Claim 19 recites in pertinent part wherein said method specification
includes a location of a device on which the value of the state variable is
stored.
The Examiner found that “The method indicates the destination
address to stored (sic) the content and state variables (column 35, lines 9-11)
(Answer 5).
Appellants argue that “[t]he method specification of claim 19 includes
the location of a device on which a state variable is stored. This is not the
same as the destination address information for placing work as suggested
by Stefik.” (Appeal Br. 15).
We disagree with Appellants. We find that the server sets the copy
count to the number-of-copies requested (FF 4), and thus stores this value as
required by the claims. We thus read the server as the location on which the
value of the state variable is stored. The server also stores the destination
address of the device which will receive the content as also required by the
claims.
Claim 20 recites in pertinent part said method specification includes a
communication protocol for obtaining the value of the state variable.
Appellants argue that “[c]laim 20 is distinguishable over Stefik,
because claim 20 recites including the applicable communication protocol
within the method specification for obtaining the value of a state variable.”
(Appeal Br. 16) We disagree with Appellants. We find that Stefik discloses
a server which we read as including the required method specification.
Since the communication from the server to the requester via a
communication protocol causes the server to decrement its copy count by the
number of copies involved in the transaction, it thus meets the required
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claims language. In light of the breadth of the claim, the Appellants’
argument is not persuasive as to error in the rejection.
We therefore will not sustain the rejection of claim 18 or claims 19-21
which depend therefrom

CONCLUSIONS OF LAW
We conclude the Appellants have not shown that the Examiner erred
in rejecting claims 1-9, 18-21 and 23-28 as being anticipated under 35
U.S.C. § 102(b) by Stefik is affirmed.

DECISION
To summarize, our decision is as follows.
The decision of the Examiner to reject claims 1-9, 18-21 and 23-28 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)(1)(iv).

AFFIRMED

mev
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