Ex Parte Wang et al

Board of Patent Appeals and Interferences

Dec 16, 2009

10162212 (B.P.A.I. Dec. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte XIN WANG and BIJAN TADAYON
____________

Appeal 2009-008480
Application 10/162,212
Technology Center 3600
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Decided: December 16, 2009
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-008480
Application 10/162,212

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STATEMENT OF THE CASE
Xin Wang and Bijan Tadayon (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-19 and 29-40. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
The invention “relates to a method and system for digital rights
management and, more particularly, to a method and system for
automatically offering and granting rights over a communications network
or other channels.” Specification [0003].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for transferring usage rights adapted to be associated
with items within a digital rights management system, said method
comprising:
generating, by a supplier, at least one first offer including usage
rights and meta-rights for the items, said usage rights defining a
manner of use for the items, said meta-rights specifying rights to
derive usage rights or other meta-rights for the items;
presenting, by the supplier, said offer to a first consumer in said
system,

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Jul. 7, 2006) and the Examiner’s Answer (“Answer,” mailed Feb. 13,
2007).
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wherein the offer expresses what rights the consumer can
acquire for the items;
receiving, by the supplier, a selection from the first consumer
indicating desired usage rights and meta-rights; and
generating, by the supplier, a first license granting to the first
consumer the usage rights and meta-rights for the items,
wherein the first license grants the usage rights and meta-rights
that are selected by the first consumer during the receiving step.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Downs
Hitson
US 6,226,618 B1
US 2002/0010759 A1
May 1, 2001
Jan. 24, 2002
The following rejections are before us for review:
1. Claims 1-13, 15-18, and 29-40 are rejected under 35 U.S.C. §102(b)
as being anticipated by Downs.
2. Claim 14 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Downs.
3. Claim 19 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Downs and Hitson.

ISSUE
The issue is whether Downs describes, expressly or inherently, “meta-
rights” as claimed.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
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Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. All the claims call for “meta-rights.”
2. The Specification provides an express definition for “meta-rights”:
Rights can specify transfer rights, such as distribution
rights, and can permit granting of rights to others or the
derivation of rights. Such rights are referred to as "meta-
rights". Meta-rights are the rights that one has to
manipulate, modify, or otherwise derive other meta-
rights or usage rights. Meta-rights can be thought of as
usage rights to usage rights. Meta-rights can include
rights to offer, grant, obtain, transfer, delegate, track,
surrender, exchange, and revoke usage rights to/from
others. Meta-rights can include the rights to modify any
of the conditions associated with other rights. For
example, a meta-right may be the right to extend or
reduce the scope of a particular right. A meta-right may
also be the right to extend or reduce the validation period
of a right.
Specification [0030] (p. 9).
3. The Examiner defines “meta-rights” to mean “Sub-rights, or
additional usage conditions derived from the usage rights.” Answer 8.
4. According to the Examiner, Downs describes “meta-rights” at col. 9,
lines 33-35 and col. 10, ll. 15-18. Answer 3.
5. Col. 9, ll. 33-35, of Downs discloses: “The Metadata Assimilation and
Entry Tool 161 is also used to enter the Usage Conditions for the
Content 113. The data in Usage Conditions can include copy
restriction rules, the wholesale price, and any business rules deemed
necessary.”
6. Col. 10, ll. 15-18, of Downs discloses: “The secondary usage
conditions data can include retail business offers such as Content 113
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purchase price, pay-per-listen price, copy authorization and target
device types, or timed-availability restrictions.”

PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1369 (Fed. Cir. 2004).
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., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).

ANALYSIS
The rejection of claims 1-13, 15-18, and 29-40 under 35 U.S.C. §102(b) as
being anticipated by Downs.
It was proper that the Examiner first attempted to construe the claims
before reaching a determination as to whether Downs anticipated the
claimed subject matter. Cf. In re Crish, 393 F.3d 1253, 1256 (Fed. Cir.
2004): “A determination that a claim is anticipated, under 35 U.S.C.
§ 102(b) involves two analytical steps. First, the Board must interpret the
claim language, where necessary. Because the PTO is entitled to give
claims their broadest reasonable interpretation, our review of the Board's
claim construction is limited to determining whether it was reasonable. In re
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Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997). Secondly, the Board must
compare the construed claim to a prior art reference and make factual
findings that “each and every limitation is found either expressly or
inherently in [that] single prior art reference.” Celeritas Techs. Ltd. v.
Rockwell Int'l Corp., 150 F.3d 1354, 1360 (Fed. Cir. 1998).” FF 3.
However, “claims are to be read in the light [of the specification], not
in a vacuum.” In re Dean, 291 F.2d 947, 951 (CCPA 1961). The written
description is “always highly relevant” in construing a claim, and “the
speicification … is the single best guide to the meaning of a disputed term.”
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
Here the Specification provides an express definition of “meta-rights”.
FF 2. The definition for “meta-rights” given in the Specification governs the
construction to be given that term in the claims.
[O]ur cases recognize that the specification may reveal a
special definition given to a claim term by the patentee
that differs from the meaning it would otherwise possess.
In such cases, the inventor's lexicography governs. See
CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359,
1366 (Fed. Cir. 2002). In other cases, the specification
may reveal an intentional disclaimer, or disavowal, of
claim scope by the inventor. In that instance as well, the
inventor has dictated the correct claim scope, and the
inventor's intention, as expressed in the specification, is
regarded as dispositive. See SciMed Life Sys., Inc. v.
Advanced Cardiovascular Sys., Inc., 242 F.3d 1337,
1343-44 (Fed. Cir. 2001).
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
The Examiner did not rely on the definition for “meta-rights”
expressly provided in the Specification but construed the term in a manner
that would cover information about conditions set forth in “metadata” like
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those described in Downs. FF 5 - 6. However, information about conditions
set forth in “metadata” is not the same as “meta-rights” as the Appellants
have defined them - which are “the rights that one has to manipulate,
modify, or otherwise derive other meta-rights or usage rights.” FF 2. We do
not find the information about conditions set forth in “metadata” that Downs
discloses to be the same as the “meta-rights” as claimed. Accordingly, we
find that a prima facie case of anticipation of the claimed subject matter over
Downs has not been established.

The rejection of claim 14 under 35 U.S.C. §103(a) as being unpatentable
over Downs.
and
The rejection of claim 19 under 35 U.S.C. §103(a) as being unpatentable
over Downs and Hitson.
Claims 14 and 19 depend on claim 15 whose rejection under § 102 is
reversed. See supra. The rationale in support of the rejections of these
claims relies on a construction of the claim term “meta-rights” which is
inconsistent with the definition of that term as expressly provided for in the
Specification. Answer 6-7. See FF 2. Since the claims have not been given
the broadest reasonable construction in light of the Specification, a prima
facie case of obviousness of the claimed subject matter has not been
established.

CONCLUSIONS
We conclude that the Appellants have shown that the Examiner erred
in rejecting claims 1-13, 15-18, and 29-40 under 35 U.S.C. §102(b) as being
anticipated by Downs; claim 14 under 35 U.S.C. §103(a) as being
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unpatentable over Downs; and, claim 19 is rejected under 35 U.S.C. §103(a)
as being unpatentable over Downs and Hitson.

DECISION
The decision of the Examiner to reject claims 1-19 and 29-40 is
reversed.

REVERSED

mev
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