Ex Parte Widergren et al

Patent Trial and Appeal Board

Sep 1, 2016

13236514 (P.T.A.B. Sep. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/236,514 09/19/2011
8791 7590 09/01/2016
BLAKELY SOKOLOFF TAYLOR & ZAFMAN
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
Robert D. Widergren
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.
9105P006 5687
EXAMINER
POWERS, WILLIAMS
ART UNIT PAPER NUMBER
2434
MAILDATE DELIVERY MODE
09/01/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT D. WIDERGREN and PAUL GERMERAAD
Appeal2015-004647
Application 13/236,514
Technology Center 2400
Before JOHNNY A. KUMAR, TERRENCE W. McMILLIN, and
SCOTT E. BAIN, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1-3 and 5-39. 1 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
This invention is directed to a portable electronic device that is
operable to receive selections of data sets and computer programs from a
content vending device such as an Automatic Teller which is connected to
1 Claim 4 is objected to and therefore is not before us on appeal (Final Act.
11).
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Application 13/236,514
content providers over a network. Specification 1-2. Claim 1 is illustrative
of the invention and reproduced below.
1. A content dispensing system, comprising:
a machine-readable storage medium storing a plurality of
data sets and one or more executable programs, including distinct
versions of one or more executable programs, each version
compatible with a respective client system type, and each version
of the one or more executable programs for enabling
performance of a respective data set by client devices having the
corresponding client system type; and
at least one interface configured to wirelessly transfer
information to a target device in response to user selection of an
encoded data set of the plurality of data sets by a user of the target
device, wherein the information transferred to the target device
includes (A) the encoded data set of the plurality of data sets
selected by the user of the target device along with a
corresponding decoding data set that, when executed, operates to
decode the encoded data set, and (B) only the version of an
executable program of the one or more executable programs that
is compatible with the respective client system type of a
particular client device [L 1];
wherein the particular client device comprises a device
having a respective client system type and is configured to
execute programs compatible with the respective client system
type;
wherein the content dispensing system incorporates digital
rights management such that a content anti-copy mechanism is
utilized when transferring the information to the target device.
8. The content dispensing system of claim 1, further
comprising a user interface configured to receive identification
of the target device [L2].
(Emphases added regarding the contested limitations, labeled as L 1 and L2).
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Application 13/236,514
REJECTIONS AT ISSUE
A. Claims 1-3, 5-7, 9-25, and 27-38 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lagunzad (US 2003/0040838 Al; Feb. 27,
2003), Vidich (US 6,993,509 B2; Jan. 31, 2006), and Braitberg (US
7,191,153 Bl; Mar. 13, 2007). Final Act. 5-10.
B. Claims 8, 26, and 39 are rejected under 35 U.S.C. § 103(a) further
adding Lee (US 6,950,941 Bl; Sept. 27, 2005). Final Act. 11.
Grouping of Claims
Based on Appellants' arguments, we decide the appeal of all claims
rejected under rejection A on the basis of representative claim 1. See
37 C.F.R. § 41.37(c)(l)(iv).2 We address rejection Bon the basis of
representative claim 8, infra.
ANALYSIS
Rejection A of Claim 1 under§ 103
We have reviewed Appellants' arguments in the Appeal Brief, the
Examiner's rejections, and the Examiner's response to Appellants'
arguments. Appellants' arguments have not persuaded us of error in the
Examiner's rejections of claims 1-3, 5-7, 9-25, and 27-38.
2 Separate patentability is not argued for claims 2, 3, 5-7, 9-25, and 27-38.
Although claims 19, 3 7, and 3 8 are presented under separate headings (Br.
12-14), Appellants merely reference the arguments presented for claim 1
without presenting any additional arguments to establish separate
patentability. Therefore, we treat claim 1 as representative for claims 1-3,
5-7, 9-25, and 27-38. Likewise, we treat claim 8 as representative for
claims 8, 26, and 39 (Br. 14--15). Except for our ultimate decision, these
claims are not discussed further herein.
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Limitation L 1 requires that among the multiple versions of the
plurality of data sets and executable programs stored by the content
dispensing system, "only the version of an executable program of the one or
more executable programs that is compatible with the respective client
system type of a particular client device" (emphasis ours) is transferred to
the target device.
The Examiner relied on Vidich to teach this limitation (Final Act. 5-
6), specifically stating that Vidich teaches each version transferred is
compatible with a respective client system type (citing Vidich, Abstract,
3:1-10, and 4:29--46).
Appellants contend that the cited passages of Vidich discuss providing
several versions of a software player but not transferring them to a target
device (Br. 8), and concludes that all versions of a software player are
transferred via CD onto a home computer rather than only the version of the
executable program.
We agree with the Examiner that if a "respective" software player
program and a compressed data file are downloaded to a target device such
as a home computer, so as to be compatible with the target device, this does
not signify that all possible versions are downloaded (Ans. 11 ). At the very
least, it would have been obvious to one of ordinary skill in the art to
download only one version because, as the Examiner points out, the
distribution system of Vidich would not work if random software player
programs were downloaded and incompatible with the target device (id.).
Further, we find no support for Appellants' claim interpretation that
"the information transferred to the target device is ... only the version of an
executable program of the one or more executable programs that is
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Application 13/236,514
compatible with the respective client system type of a particular client
device" (emphasis ours), because the open-ended, broader claim language
"includes" is adopted instead of the term "is." In other words, "only" a
version would be included in all of the versions comprising that version.
Finally, we note that Appellants do not have support in the original
Specification for imposing specific requirements or limitations regarding
whether or not different versions of data sets or software programs are
downloaded together. Appellants' Specification states:
The information transferred to the target device includes (A) a
data set of the plurality of data sets selected by a user of the target
device, and (B) a computer program of the plurality of computer
programs that is compatible with the operating system of the
target device.
Spec. i-f 3 (emphasis ours).
Storage 50 may include a plurality of player/decoder program
files and may also include a plurality of decryption program files.
Each player/decoder program is a different version of the same
decoder software and is compatible with a respective different
type of electronic system, and/or is compatible with a respective
different operating system employable by an electronic system
such as the client device 30.
Spec. ,-r 26.
Therefore, we concur with the Examiner's interpretation that the claim
term "includes" is not exclusive to other pluralities of program files.
Appellants present additional arguments that Lagunzad and Braitberg
do not teach limitation L 1, and therefore a prima facie case of obviousness
has not been established (Br. 6-7 and 9-11). However, the Examiner points
out that Vidich was used to teach this limitation (Ans. 10 and 12), and
therefore we are not persuaded the Examiner's broader reading of contested
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limitation L 1 on the corresponding features found in Vidich is overly broad
or unreasonable.
Regarding Appellants' related contention that Lagunzad does not
teach "wherein the information transferred to the target device includes (A)
the encoded data set of the plurality of data sets selected by the user of the
target device along with a corresponding decoding data set," the Examiner
relied on Vidich to teach this limitation (Final Act. 7 (citing Vidich 3: 1-10) ).
Appellants do not contest this finding; therefore, we accept the Examiner's
findings as our own and agree with the Examiner that Vidich teaches that the
information transferred includes encoded and decoding data sets.
Therefore, on this record, in light of Appellants' Specification, and by
a preponderance of the evidence, we sustain the Examiner's rejection of
claim 1. Independent apparatus claims 1, 19, 37, and 38 are not separately
argued and recite functional limitations commensurate to contested
limitations L 1 and L2 of claim 1. Thus, the remaining claims rejected under
the§ 103(a) rejection A fall with representative claim 1. See "Grouping of
Claims" supra.
Rejection B of Claim 8 under§ 103
Addressing limitation L2, Appellants state that Lee does not teach a
user interface configured to receive identification of the target device (Br.
15). However, Appellants (Br. 15) do not directly address the Examiner's
specific findings (Ans. 12 (citing Lee, 13:11-14:40 and Fig. 8)), which rely
on a Device-ID field that is compared with a Licensed secure digital music
initiative Compliant Module (LCM) corresponding to the content output
unit. We note that the Device-ID field may correspond to an identification
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of the target device and the LCivI may correspond to a user interface.
Therefore, we conclude that the Examiner's findings are reasonable and that
Lee teaches limitation L2.
For the foregoing reasons, we sustain the Examiner's rejection of
claim 8, and the remaining claims 26 and 39 rejected under the§ 103(a)
rejection B which fall with representative claim 8. See "Grouping of
Claims" supra.
DECISION
We affirm the Examiner's rejections of claims 1-3 and 5-39.
No time for taking any action connected with this appeal may be
extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 41.50(±).
AFFIRMED
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