Ex Parte Tadayon et al

Patent Trial and Appeal Board

May 14, 2013

11711735 (P.T.A.B. May. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte BIJAN TADAYON, ARAM NAHIDIPOUR, 7
XIN WANG, MICHAEL C. RALEY, 8
GUILLERMO LAO, THANH T. TA, 9
and CHARLES P. GILLIAM 10
___________ 11
12
Appeal 2011-004387 13
Application 11/711,735 14
Technology Center 3600 15
___________ 16
17
18
Before ANTON W. FETTING, BIBHU R. MOHANTY, and 19
MEREDITH C. PETRAVICK, Administrative Patent Judges. 20
21
FETTING, Administrative Patent Judge. 22
23
24
DECISION ON APPEAL 25
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Application 11/711,735

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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed June 30, 2010) and Reply Brief (“Reply Br.,” filed December 27,
2010), and the Examiner’s Answer (“Ans.,” mailed October 26, 2010).
Bijan Tadayon, Aram Nahidipour, Xin Wang, Michael C. Raley, 2
Guillermo Lao, Thanh T. Ta, and Charles P. Gilliam (Appellants) seek 3
review under 35 U.S.C. § 134 of a final rejection of claims 1-3, 7-9, and 16-4
20, which along with claims 10-15, and 21-24 withdrawn from 5
consideration, are the only claims pending in the application on appeal. We 6
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 7
The Appellants invented a way of distributing usage rights to digital data 8
(Spec., para. [0002]). 9
An understanding of the invention can be derived from a reading of 10
exemplary claim 1, which is reproduced below [bracketed matter and some 11
paragraphing added]. 12
1. A method 13
for transferring digital content from a digital work 14
by a first device, 15
the first device being associated with a first 16
authorized user 17
to a second device, 18
the method comprising: 19
[1] receiving, 20
at the first device, 21
a digital work 22
comprising digital content 23
which is associated with usage rights; 24
[2] receiving, 25
at the first device, 26
a transfer permission right 27
associated with the digital content, 28
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wherein the transfer permission right associated with the 1
digital content 2
is tracked at a server; 3
[3] sending a request 4
from the first device 5
to the server 6
for permission 7
for the first device to transfer the digital content to 8
the second device, 9
the request indicating 10
an identification of the first authorized user, 11
the server enforcing the transfer permission right 12
associated with the digital content 13
based on the identification of the first authorized 14
user indicated by the request; 15
and 16
[4] transferring the digital content 17
from the first device 18
to the second device. 19
20
The Examiner relies upon the following prior art: 21
Stefik US 5,638,443 Jun. 10, 1997
22
Claims 1-3, 7-9, and 16-20 stand rejected under 35 U.S.C. § 103(a) as 23
unpatentable over Stefik. 24
ISSUES 25
The issues of obviousness turn primarily on whether Stefik tracks and 26
requests rights within the scope of the claims. 27
FACTS PERTINENT TO THE ISSUES 28
The following enumerated Findings of Fact (FF) are believed to be 29
supported by a preponderance of the evidence. 30
31
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Facts Related to the Prior Art 1
Stefik 2
01. Stefik is directed to distribution and usage rights enforcement 3
for digitally encoded works. Stefik, 1:6-7. 4
02. A digital work is comprised of a description part and a content 5
part. The description part contains control information for the 6
composite digital work. The content part stores the actual digital 7
data comprising the composite digital work. The description part 8
is logically organized in an acyclic structure (e.g. a tree structure.) 9
For a composite digital work each node of the acyclic structure 10
represents an individual digital work or some distribution interest 11
in the digital work. A node in the acyclic structure is comprised 12
of an identifier of the individual work, usage rights for the 13
individual digital work and a pointer to the digital work. In this 14
representation, the description part may naturally be stored 15
separately on a separate medium from the content part. Stefik, 16
4:1-14. 17
03. Composite digital works are stored in repositories. A 18
repository is comprised of a storage means for storing a digital 19
work and its attached usage rights, an external interface for 20
receiving and transmitting data, a processor and a clock. A 21
repository has two primary operating modes, a server mode and a 22
requester mode. When operating in a server mode, the repository 23
is responding to requests to access digital works. When operating 24
in requester mode, the repository is requesting access to a digital 25
work. A repository will process each request to access a 26
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composite digital work by examining the usage rights for each 1
individual digital work found in the description part. Access is 2
granted if the composite digital work if access to each of the 3
individual digital works can be granted. Alternatively, if access to 4
all the individual digital works cannot be granted, partial access 5
can be granted only to those individual digital works which grant 6
access. Stefik, 4:15-31. 7
04. The enforcement elements of the present invention are 8
embodied in repositories. Among other things, repositories are 9
used to store digital works, control access to digital works, bill for 10
access to digital works and maintain the security and integrity of 11
the system. Stefik, 6:1-5. 12
05. In Fig. 1, the digital work remains securely in Repository 1 13
until a request for access is received. The request for access 14
begins with a session initiation by another repository. Here a 15
Repository 2 initiates a session with Repository 1. Repository 2 16
may then request access to the Digital Work for a stated purpose. 17
The purpose may be, for example, to print the digital work or to 18
obtain a copy of the digital work. The purpose will correspond to 19
a specific usage right. In any event, Repository 1 checks the 20
usage rights associated with the digital work to determine if the 21
access to the digital work may be granted. The check of the usage 22
rights essentially involves a determination of whether a right 23
associated with the access request has been attached to the digital 24
work and if all conditions associated with the right are satisfied. 25
Stefik, 6:23-41. 26
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06. The server checks security and access conditions, step 1807. 1
Such security and access conditions are satisfied if: 1) the 2
requester is at the specified security class, or a higher security 3
class, 2) the server satisfies any specified authorization test and 3) 4
the requester satisfies any specified authorization tests and has any 5
required digital tickets. Stefik, 31:18-23. 6
07. A transfer transaction is a request to move copies of the work 7
with the same or lesser usage rights to another repository. In 8
contrast with a copy transaction, this results in removing the work 9
copies from the server. Stefik, 34:49-52. 10
08. A loan transaction is a mechanism for loaning copies of a 11
digital work. The maximum duration of the loan is determined by 12
an internal parameter of the digital work. Works are automatically 13
returned after a predetermined time period. Stefik, 35:11-15. 14
ANALYSIS 15
We are not persuaded by the Appellants’ argument that 16
[i]n contrast with the Examiner's broad and unsupported 17
assertion that "permission rights would be tracked by 18
authorization repository 202, " the authorization repository 202 19
of Stefik does not "track rights" as claimed. Instead, Stefik 20
clearly discloses that the authorization repository is only 21
communicated with when a condition requires authorization. 22
23
Appeal Br. 6. 24
The claim specifies neither time taken nor manner applied that “digital 25
content is tracked at a server.” Limitation [2]. Stefik discusses 26
authorization servers, credit servers, and repository servers, each of which 27
perform some degree of communication, which is a form of tracking, during 28
their participation in the process. We also note the tracking is not a step 29
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itself, but merely part of characterizing context. Thus it is of questionable 1
patentable weight, even were the time and manner constraints specified. 2
We are not persuaded by the Appellants’ argument that 3
the Examiner implies that repository 201 sends a request to 4
authorization repository 202 for permission for the repository 5
201 to transfer the digital work. To the contrary, Stefik teaches 6
that repository 201 itself determines if access to the digital 7
work may be granted. 8
9
Appeal Br. 8. 10
Again, Appellants’ arguments are not commensurate with the scope of 11
the claim. The claim merely recites “sending a request from the first device 12
to the server for permission for the first device to transfer the digital content 13
to the second device, the request indicating an identification of the first 14
authorized user, the server enforcing the transfer permission right associated 15
with the digital content based on the identification of the first authorized 16
user indicated by the request.” Again, the manner and degree of permission 17
is unspecified and not further narrowed. Where plural steps are required to 18
gain permission as in Stefik, the request for that permission is spread over all 19
of those steps. Any one of those steps is part of the request and thus is 20
performed “for permission.” There is no argument that Stefik’s 21
authorization is among those steps. 22
We are not persuaded by the Appellants’ argument that the claimed 23
invention has certain advantages over Stefik. Presumably, this argument is 24
meant to present secondary considerations evidencing unpredictability. As 25
with the earlier arguments, these purported advantages are shown in the 26
context of limitations not appearing in the claims, such as a further 27
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narrowing of the time and manner of tracking. The remaining claims are 1
argued on the basis of claim 1. 2
3
CONCLUSIONS OF LAW 4
The rejection of claims 1-3, 7-9, and 16-20 under 35 U.S.C. § 103(a) as 5
unpatentable over Stefik is proper. 6
7
DECISION 8
The rejection of claims 1-3, 7-9, and 16-20 is affirmed. 9
No time period for taking any subsequent action in connection with this 10
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 11
§ 1.136(a)(1)(iv) (2011). 12
13
AFFIRMED 14
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Klh 19