Ex Parte Tadayon et al

Patent Trial and Appeal Board

Apr 7, 2014

11584590 (P.T.A.B. Apr. 7, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BIJAN TADAYON, ARAM NAHIDIPOUR, XIN WANG,
MICHAEL C. RALEY, GUILLERMO LAO, and THANTH T. TA
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Appeal 2011-012882
Application 11/584,590
Technology Center 2400
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Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-012882
Application 11/584,590

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STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 7-20 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to a system and method
for documents having a hierarchical right structure and for assigning those
rights (Spec., para. [0002]). Claims 7 and 14, reproduced below with the
numbering in brackets added, is representative of the subject matter on
appeal.
7. A method for transferring rights associated with digital
works, the method comprising:
[1] receiving, by a first device, rights for a digital work,
the rights comprising at least a usage right and a delegation
right for the digital work, wherein the usage right defines a use
for the digital work and the delegation right governs assigning
rights for further distribution of the digital work, and wherein
the delegation right is associated with tracking actions requiring
the recording of any distribution action relating to the digital
work;
[2] receiving, by a right management module, a request
to delegate rights for the digital work;
[3] determining, by the right management module,
whether the request is allowable based on the delegation right
of the digital work and a distribution history of recorded
distribution actions relating to the digital work; [4] and
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assigning, by a right assignment module, at least one of
the usage right and the delegation right to a second device if it
is determined that the request is allowable.

14. A system for transferring rights associated with digital
works, the system comprising:
[1] a first device configured to receive rights for a digital
work, the rights comprising at least a usage right and a
delegation right for the digital work, wherein the usage right
defines a use for the digital work and the delegation right
governs assigning rights for further distribution of the digital
work, and wherein the delegation right is associated with
tracking actions requiring the recording of any distribution
action relating to the digital work;
a right management module configured to receive a
request to delegate rights for the digital work, and determine
whether the request is allowable based on the delegation right
of the digital work and a distribution history of recorded
distribution actions relating to the digital work; and
a right assignment module configured to assign at least
one of the usage right and the delegation right to a second
device if it is determined that the request is allowable.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 14-20 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
2. Claims 7-20 are rejected under 35 U.S.C. § 102(e) as
anticipated by Kobata (US 2002/0077985 A1, pub. Jun. 20, 2002).

Appeal 2011-012882
Application 11/584,590

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FINDINGS OF FACT
We find the findings of fact in the Analysis section below are
supported at least by a preponderance of the evidence1.

ANALYSIS
Rejection under 35 U.S.C. § 101
The Examiner has rejected claim 14 under 35 U.S.C. § 101 as being
drawn to a system that is implemented in software only (Ans. 3). In
contrast, the Appellants argue that this rejection is improper (Br. 4-7).
We agree with the Appellants. The Specification at paragraph [0065]
does state that the system can be implemented in “hardware and/or
software.” However, claim 14 is a system claim and the body of the claim
specifically claims “a first device,” “a second device” and a specially
configured “right management module,” which are not considered to be
software in light of the Specification. Note that here the Specification at
paragraph [0065] states that the system can be implemented in “devices
and/or software” (emphasis added) and thus makes a distinction between a
“device” and “software.” For these above reasons, the rejection made under
35 U.S.C. § 101 is not sustained.

Rejection under 35 U.S.C. § 102(e)
The Appellants argue that the rejection of claim 1 is improper because
the prior art fails to disclose elements of claim limitation [3] (Br. 12-13,

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 11/584,590

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Reply Br. 6-8). In contrast, the Examiner has determined that the cited
claim limitation [3] is found in Kobata at paragraphs [0021], [0089], [0100],
and [0120] (Ans. 4, 7).
We agree with the Appellants. Here claim limitation [3] requires:
[3] determining, by the right management module, whether the
request [to delegate rights for the digital work] is allowable
based on the delegation right of the digital work and a
distribution history of recorded distribution actions relating to
the digital work. [(Claim 7, phrase in brackets and emphasis
added).]
Thus, the claim requires that the determining whether the request is
allowable is based in part on a distribution history of recorded distribution
actions relating to the digital work.
Kobata at paragraphs [0021], [0089], [0100], and [0120] fails to
disclose that the claimed determination on whether the request is allowable
is based in part on a distribution history of recorded distribution actions
relating to the digital work as required, and the rejection is not sustained.
While Kobata at paragraph [0120] does disclose tracking usage information,
such as viewing and purchase histories, there is no specific disclosure that
this tracking is used in determining whether a request to delegated rights for
digital works is deemed allowable. For these reasons, the rejection of claim
1 and its dependent claims is not sustained. Claim 14 contains a similar
limitation and the rejection of this claim and its dependent claims is not
sustained for these same reasons.

Appeal 2011-012882
Application 11/584,590

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CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims as listed in the Rejection section above.

DECISION
The Examiner’s rejection of claims 7-20 is reversed.

REVERSED

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