Ex Parte Wang et al

Board of Patent Appeals and Interferences

Jul 27, 2010

10162701 (B.P.A.I. Jul. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
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APPLICATION NO.
EXAMINER
AUGUSTIN, EVENS J
10/162,701 06/06/2002 Xin Wang 11 1325-290100 6475
FILING DATE
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
MAIL DATE
The time period for reply, if any, is set in the attached communication.
ATTORNEY DOCKET NO.
DELIVERY MODE
PTOL-90A (Rev. 04/07)
CONFIRMATION NO.
07/27/2010 PAPER
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte XIN WANG,
THANH TA,
GUILLERMO LAO, and
EDDIE J. CHEN
Appeal 2009-01 1700
Application 1011 62,70 1
Technology Center 3600
Decided: July 27, 20 10
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R.
MOHANTY, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-01 1700
Application 1011 62,70 1
STATEMENT OF THE CASE
Xin Wang, Thanh Ta, Guillermo Lao, and Eddie J. Chen (Appellants)
seek review under 35 U.S.C. 5 134 (2002) of a final rejection of claims 1-18
and 28-29, the only claims pending in the application on appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. 5 6(b)
(2002).
We AFFIRM.
THE INVENTION
The Appellants invented a method for transferring rights associated to
items from a rights supplier to a rights customer. Specification ¶ 0008.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below [bracketed matter and some
paragraphing added].
1. A method for transferring rights adapted to be associated
with items from a rights supplier to a rights consumer, said
method comprising:
[I] obtaining a set of rights associated with an item, said set
of rights including a meta-right, wherein the meta-right is
provided in digital form, is enforceable by a repository, and
specifies a derivable right that can be derived from exercising
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed September 15, 2008) and the Examiner's Answer ("Ans.," mailed
January 7, 2009), and Final Rejection ("Final Rej.," mailed May 24, 2006).
Appeal 2009-01 1700
Application 1011 62,70 1
the meta-right by the rights consumer, a condition that must be
satisfied to exercise the meta-right, and a state variable related
to the condition, said derivable right being another meta-right
or a usage right, whereby the meta-right is distinct from any
usage rights specifying how the item can be used and
distributed;
[2] determining by a repository whether the rights consumer
is entitled to exercise the meta-right to derive the derivable right
specified by the meta-right; and
[3] if the rights consumer is entitled to exercise the meta-
right to derive the derivable right specified by the meta-right,
deriving the derivable right and generating a license including
the derived right, said license being enforceable by a repository.
THE REJECTIONS
The Examiner relies upon the following prior art:
Downs et al. US6,226,618B1 May 1,2001
Claims 1-18 and 28-29 stand rejected under 35 U.S.C. 5 102(b) as being
anticipated by Downs.
ISSUES
The issue of whether the Examiner erred in rejecting claims 1-18 and 28
29 under 35 U.S.C. 5 102(b) as being anticipated over Downs turns on
whether Downs describes meta-rights as required by the claimed invention.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Appeal 2009-01 1700
Application 1011 62,70 1
Facts Related to the Prior Art
Downs
01. Downs is directed to a system and related tools for the secure
delivery and rights management of digital assets, such as print
media, films, games, and music over global communications
networks. Downs 152-57.
02. Downs describes a digital content electronic distribution system
that has a rights management architecture which consists of layers
to protect the usage of content. Downs 19:40-45. A content usage
layer permits the specification and enforcement of the conditions
or restrictions imposed on the use of content at end user devices.
Downs 21:23-26. Conditions may specify the number of plays
allowed for the content, whether the creation of a secondary copy
is permitted, the number of secondary copies, or whether the
content can be copied to an external device. Downs 21:26-30.
The content provider sets the allowable usage conditions and
transmits them to the electronic store. Downs 21:30-33. The
electronic store can add to or narrow the usage conditions, as long
as the original conditions are not invalidated, and then transmit the
usage conditions to the end user device. Downs 21:33-39.
03. The content provider creates metadata container and a content
container for every content distributed. Downs 23:37-39. The
metadata secure container includes metadata (such as artist name,
CD cover art, or other content dependant parts), usage conditions,
Appeal 2009-01 1700
Application 1011 62,70 1
templates, watermarking instructions, certificates, and digital
signatures. Downs 29:35-61 and 30: 19-5 1.
Facts Related To The Level Of Skill In The Art
04. Neither the Examiner nor the Appellants have addressed the
level of ordinary skill in the pertinent art of digital rights
management systems. We will therefore consider the cited prior
art as representative of the level of ordinary skill in the art. See
Okajima v. Bourdeau, 261 F.3d 1350,1355 (Fed. Cir. 2001)
("[Tlhe absence of specific findings on the level of skill in the art
does not give rise to reversible error 'where the prior art itself
reflects an appropriate level and a need for testimony is not
shown"') (quoting Litton Zndus. Prods., Znc. v. Solid State Sys.
Corp., 755 F.2d 158, 163 (Fed. Cir. 1985).
Facts Related To Secondary Considerations
05. There is no evidence on record of secondary considerations of
non-obviousness for our consideration.
ANALYSIS
Claims 1-1 8 and 28-29 rejected under 35 U.S. C. § 102(b) as being
anticipated by Downs
The Appellants first contend that Downs fails to describe the feature of a
meta-right that is provided in digital form and is enforceable by a repository
as required by claims 1 and 10. App. Br. 5-6. We disagree with the
Appellants. Downs describes a content usage layer that permits the
specification and enforcement of the conditions or restrictions imposed on
Appeal 2009-01 1700
Application 1011 62,70 1
the use of content at end user devices. FF 02. The specification and
enforcement of conditions are usage rights. These usage rights are included
in a metadata container. FF 03. Usage rights include conditions that may
specify the number of plays allowed for the content, whether the creation of
a secondary copy is permitted, the number of secondary copies, or whether
the content can be copied to an external device. FF 02. As such, the usage
conditions embedded in the metadata container are defined and enforceable,
which is the same as the meta-rights of the claimed invention.
The Appellants specifically contend that the usage rights described by
Downs are for consumers and are not meta-rights the content provider or
store exercises to issue rights to consumers. App. Br. 6. We disagree with
the Appellants. First, the Appellants fail to provide any specific rationale as
to the general allegation that Downs' usage rights cannot be the claimed
meta-rights. As discussed supra, the usage rights embedded in the metadata
container are the same as the claimed meta-rights. App. Br. 6. Additionally,
Downs describes that the content stores can add and narrow the usage
conditions as long as the original conditions are not invalidated. FF 02. As
such, the content providers set and define the original conditions and content
stores can add or narrow conditions. Therefore, the Appellants' argument
that the stores simply pass usage conditions on to the consumers is not found
persuasive.
The Appellants further argue that the usage rights described by Downs
are simply passed from the store or distributor to the consumer and there is
not description as to how to specify and control what usage rights and
conditions can be added or removed. App. Br. 6. We disagree with the
Appellants. Claim 1 fails to recite any limitations requiring how to specify
Appeal 2009-01 1700
Application 1011 62,70 1
and control what usage rights and conditions can be added or removed. As
such, the Appellants are arguing limitations not found in the claims and
these arguments are not found persuasive.
The Appellants additionally contend that Downs fails to describe meta-
rights specifying (1) a derivable right that can be derived from exercising the
meta-right by the rights consumer, (2) a condition that must be satisfied to
exercise the meta-right, and (3) a state variable related to the condition.
App. Br. 7-8. The Appellants specifically argue that Downs merely
describes purchase transaction criteria and not meta-rights. App. Br. 7. We
disagree with the Appellants. As discussed supra, Downs describes usage
rights embedded in a metadata container that describes a right that can be
derived from exercising the usage right. FF 02. For example, Downs
describes a usage right of the ability to create a secondary copy of purchased
content and the exercise of this usage right allows a user to create a copy.
FF 02. Downs further describes a condition that must be satisfied in order to
exercise usage rights. FF 02. For example, Downs describes a usage right
of specifying the number of secondary copies a user is permitted to make,
where the condition that must be satisfied is that the number of copies
already made must be below a defined threshold number. FF 02. Downs
also describes a state variable to a condition, including variables for the
number of copies already created or a variable describing the total number of
copies permitted. FF 02. Therefore, Downs describes more than a mere
financial transaction. The Appellants fail to provide any further rationale as
to how Downs is deficient in describing the claimed limitations and as such
the Appellants' arguments are not found persuasive.
Appeal 2009-01 1700
Application 1011 62,70 1
The Appellants further contend that dependant claims 2-9, 11-18, and
28-29 are allowable for the same reasons discussed supra. App. Br. 8.
However, the Appellants' arguments in support of claims 1 and 10 were not
found persuasive supra and therefore are not found persuasive here for the
same reasons.
CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1-18 and 28-29 under 35
U.S.C. 5 102(b) as being anticipated by Downs.
DECISION
To summarize, our decision is as follows.
The rejection of claims 1-18 and 28-29 under 35 U.S.C. 5 102(b) as
being anticipated by Downs is sustained.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 1.136(a)(l)(iv) (2007).
AFFIRMED
mev
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