Ex Parte Ta et al

Patent Trial and Appeal Board

Mar 24, 2016

10163634 (P.T.A.B. Mar. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/163,634
98804 7590
Reed Smith LLP
P.O. Box488
Pittsburgh, PA 15230
0610712002
03/28/2016
FIRST NAMED INVENTOR
Thanh Ta
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.
10-531-US-P3 (cg230400) 8116
EXAMINER
HEWITT II, CAL VIN L
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
03/28/2016 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):
ptoipinbox@reedsmith.com
mskaufman@reedsmith.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte THANH TA, THOMAS DEMARTINI, JOSEPH Z. FUNG,
GUILLERMO LAO, MAI NGUYEN, BIJAN TADA YON,
VINCENT TIEU, DUC TRAN, XIN WANG,
and EDGARDO VALENZUELA
Appeal2013-002160
Application 10/163,6341
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 29-85. We have jurisdiction under 35 U.S.C.
§ 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 Appellants identify ContentGuard Holdings, Inc. as the real party in
interest. Appeal Br. 2.
Appeal2013-002160
Application 10/163,634
THE INVENTION
Appellants claim a method for managing use of protected resources
within a system of resources. (Spec. i-f 7).
Claim 29 reproduced below, is representative of the subject matter on
appeal.
29. A method for managing use of a protected resource
within a device, wherein the device includes an application that
uses the protected resource, the method comprising:
granting, by a computing device, the application access
to the protected resource to perform an authorized usage
operation;
performing, by a computing device, the authorized usage
operation, wherein the performing step includes transforming
the protected resource into a derived resource and using the
derived resource after transforming;
permitting, by a computing device, the application to
continue using the derived resource only as long as a during-
access condition associated with the protected resource is
satisfied, wherein the satisfaction of the during-access condition
is only required \'l1hile the derived resource is being used by the
application; and
terminating, by a computing device, use of the derived
resource by the application when a termination event occurs, or
when the during-access condition is no longer satisfied.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Stefik
Ginter
us 5,629,980
us 5,892,900
2
May 13, 1997
Apr. 6, 1999
Appeal2013-002160
Application 10/163,634
The following rejection is before us for review.
Claims 29-85 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Stefik and Ginter.
FINDINGS OF FACT
1. We adopt as our own the Examiner's findings as set forth on pages
3---6 of the Answer.
2. 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.
Col. 31, 52---62.
3. Stefik discloses
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.
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Appeal2013-002160
Application 10/163,634
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.
Col. 35, 11. 14--29.
4. Stefik discloses "a creator [of the digital work] will then determine
appropriate usage rights and fees, attach them to the digital work, and store
them in Repository 1, step 102." Col. 7, 11. 8-10.
ANALYSIS
The Appellants argue independent claims 29, 48 and 67 as a group,
selecting independent claim 29 as the representative claim for this group
(Appeal Br. 6), and the remaining independent claims stand or fall with
claim 1. 37 C.F.R. § 41.37( c )(1 )(iv).
Appellants argue,
However, while the rights disclosed in Stefik can
be considered to be digital content, they are not
disclosed as being the digital content to which they
are associated. Even though a right may be
associated with a digital content, Stefik does not
disclose that the right itself is derived from the
digital content.
(Appeal Br. 8).
We disagree with Appellants because Appellants' argument fails from
the outset because it is not based on limitations appearing in the claims and
is not commensurate with the broader scope of claim 1, which merely recites
the satisfaction of the during-access condition is only required while the
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Appeal2013-002160
Application 10/163,634
derived resource is being used by the application, and does not require that
the right to continue using the derived resource is derived from the derived
resource. In re Self, 671F.2d1344, 1348 (CCPA 1982). The fact that the
claims use the word "derived" to modify "resource" does not in our view
raise the term to a meaning that "the right itself is derived from the digital
content." Appellants' Specification does not explicitly define the term
"derived resource," nor does it utilize the term contrary to its customary
meaning. Instead, the Specification at paragraph 22 describes the term in the
context of "could include" e.g., the clear image itself. The ordinary and
customary definition of the term "derived" is: "to take, receive, or obtain
especially from a specified source. "2 We thus find that Stefik discloses a
"derived resource" because the copied content is obtained/derived from the
source Repostiory 1 where the creator originally stores it. (FF 4).
Appellants next argue that
Stefik does not disclose that conditions are
required while the requested right is being
exercised or the protected content is being used.
In contrast, Co 1. 31, lines 3 0-3 7 of Stefik relates to
an embodiment of Stefik associated with the usage
transaction protocol disclosed in FIG. 18 and
related paragraphs. This protocol describes the
process of granting initial access to digital content
as discloses in Col. 7, lines 25-32, noted above.
(Appeal Br. 8).
We disagree with Appellants. The Examiner found that Stefik
discloses permitting, by a computing device, the application to continue
using the derived resource only as long as a during-access condition
2 httQ://www.meITiam-webster.com/dictionary/derive (last visited
312012016).
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Appeal2013-002160
Application 10/163,634
associated with the protected resource is satisfied, at column 31 line 59.
(Answer 6, (FF. 2)). We agree with the Examiner because we find that the
copy count condition in Stefik is a continuing 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 2). The copy count thus is a continuing
condition extending with the copying of each digital work through its
entirity. We further find that Stefik discloses a usage transaction in the form
of copying the work from the Repository 1 source to the user's repository
since we find that copying is a form of use. Thus, since we construe use of
the derived work to include copying of the work, and find the copy count to
be continuous with such copying, we thus find that Stefik meets the claim
requirement of terminating, by a computing device, use of the derived
resource by the application when a termination event occurs, when the
termination event of the copy count reaches zero. (FF 2-4).
We also affirm the rejections of the dependent claims since Appellants
have not challenged such with any reasonable specificity. See In re Nielson,
816 F.2d 1567, 1572 (Fed. Cir. 1987).
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 29-85 under
35 U.S.C. § 103.
DECISION
The decision of the Examiner to reject claims 29-85 is affirmed.
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Application 10/163,634
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
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