Ex Parte Yen et al

Board of Patent Appeals and Interferences

Jan 28, 2010

11203358 (B.P.A.I. Jan. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WEI YEN, DAVID BLYTHE,
JOHN PRINCEN, and PRAMILA SRINIVASAN
____________________

Appeal 2009-003044
Application 11/203,358
Technology Center 3600
____________________

Decided: January 28, 2010
____________________

Before: WILLIAM F. PATE III, STEVEN D.A. MCCARTHY, and
FRED A. SILVERBERG, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
This is an appeal from the final rejection mailed June 18, 2007.

Appeal 2009-003044
Application 11/203,358

2
STATUS OF APPEALED CLAIMS
In Appellants’ Notice of Appeal filed September 18, 2007, Appellants
did not specify the finally or twice rejected claims that are being pursued in
the appeal. On page 2 of Appellants’ Brief, Appellants state: “The final
rejection of pending claims 11- 16, 18-21, as presented in Appendix A, is
appealed.” On page 4 of Appellants’ Brief, Appellants state: “The grounds
for review on appeal are . . . whether claims 11-13 and 16 are unpatentable.”
Finally, on page 9 of Appellants’ Brief, Appellants state: “Since claim 11 is
the only independent claim, an appeal of dependent claims 14-15[sic], 18-21
is deemed unnecessary and is therefore not requested.” Based upon these
three recitations in Appellants’ Brief, the processing staff at the Board
assigned this appeal a docketing number and a panel due to the fact that Ex
parte Ghuman 2008 WL 2109842, 88 USPQ2d 1478, 1480 (BPAI 2008)
(Precedential), (rejected claims that are not appealed are considered
withdrawn and subjected to cancellation by the Examiner by remand) is
deemed not to apply. However, given the unequivocal statement on page 9
of the brief that claims 14, 15, and 18-21 are not appealed, we will not
consider these claims in our decision, and the Examiner is instructed to
cancel these claims upon return of the application to the examining corps.
We have jurisdiction over the appeal under 35 U.S.C. §§ 134 and 6.
The claimed subject matter is directed to a playback device in
communication with a license server that provides conditional licenses in
response to feedback from the playback device.
Claim 11, reproduced below, is further illustrative of the claimed
subject matter.
Appeal 2009-003044
Application 11/203,358

3
11. A playback license device executing instructions
according to specified conditions, comprising:

an input means for receiving feedback associated with
runtime state of a content element from a playback device;

memory having executable modules, including a license
generator module, stored thereon;

a processor, coupled to the memory, for executing the
executable modules;
a license generator, including the license generator
module, configured to generate a conditional license using state
from the playback device and server-side data associated with a
user of the playback device, wherein the runtime state, which is
used by game logic at the playback device, is used to construct
limitations on the content rights;

an output means for delivering the modified rights to the
playback device.

REFERENCES
The references of record relied upon by the examiner as evidence of
obviousness are:
Inoue US 2003/0028622 A1 Feb. 06, 2003
Shteyn US 2003/0157985 A1 Aug. 21, 2003

REJECTIONS
Claims 11-13 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable based on the combined teachings Inoue and Shteyn.

ISSUE
On page 8 of Appellants’ brief, Appellants contend that Inoue does
not receive feedback associated with runtime state of a content element from
Appeal 2009-003044
Application 11/203,358

4
a playback device. Therefore, Appellants state that Inoue does not disclose a
generator configured to generate a conditional license using states from the
playback device wherein the runtime state is used to construct limitations on
the content rights Appellants further argue that Shteyn does not disclose a
license generator that uses runtime state to generate a conditional license. In
fact, Appellants argue that the runtime state is irrelevant for the purposes of
generating a license in the Shteyn device. Therefore, it is Appellants’
argument that neither Inoue nor Shteyn discloses a license generator
configured to generate a conditional license using state from the playback
device wherein the runtime state is used to construct limitations on the
content rights.
With respect to the dependent claims, only claim 12 is separately
argued in that Appellants state that Inoue does not disclose that the runtime
state includes a secure state. However, the Examiner cites paras. [0133] and
[0147]-[0148] of Inoue as disclosing this feature. Appellants have failed to
point to any error in this finding of the Examiner. Consequently, we hold
that claim 12 along with the other dependent claims 13 and 16 will stand or
fall with claim 11.
Accordingly, the issue for our consideration is whether Appellants
have established that the Examiner erred in determining that the combined
teachings of Inoue and Shteyn disclose a license generator wherein the
runtime state is used to construct limitations on the content rights.

FINDINGS OF FACT
The following is Appellants’ finding of fact with respect to the Inoue
playback license device which we adopt as our own:
Appeal 2009-003044
Application 11/203,358

5
Inoue apparently discloses a usage restriction control system to
protect children from harmful contents such as images of
violence and pornography. (¶¶ 2-3). A parental system (a
license management system) allows a parent in each home to
set content-usage restrictions more specific to each child. (¶ 5).
A license management server receives a request from a first
terminal or user (the parent of a family in the home) to restrict
content use of a second terminal or user (the child of the
parent). (¶7). Content requests are commands sent from a
terminal to request distribution of a content desired by the user.
(¶ 38). The management server responds to requests made from
either the parent or child terminal. (¶ 45). The user of the child
terminal makes content requests to the server or, if content is to
be discontinued because the end time of a valid period
approaches, the user receives notice and the terminal forwards a
content request to the parent terminal showing the monitored
playback state to the parent at that time. (¶¶ 118, 133, 147).
Inoue discloses a system in which content requests are
discrete and initiated by the user, and the server responds to
discrete requests for content when they are received. Inoue
discloses a parent terminal responding to a discrete request of
the child terminal. Inoue does not disclose a device which,
without a user initiating a discrete request or receiving notice,
automatically modifies the rights to content based on real-time
input of feedback of the runtime state of content elements.
Moreover, Inoue does not disclose content that may be pre-
loaded and available at the playback device in response to the
modification of rights, thereby enabling previously-stored
content in the playback device. In fact, Inoue would appear to
teach away from providing pre-loaded content because it is a
restriction control system designed to prevent the delivery of
violent or pornographic content to children.
Br. 5-6. Emphasis original.
Shteyn discloses a game environment. See Shteyn, paragraph [0028].
A server has a monitoring function that monitors progress or score of a first
participant and keeps a log. Para. [0029]. An analyzer compares stored
Appeal 2009-003044
Application 11/203,358

6
performance for the first participant with all other participants to determine
whether performance of the first participant is significantly better. Para
[0030]. If the first participant’s strategy is new, the strategy and the first
participant’s name are published. Para. [0031]. The participant can be
rewarded in various ways when a second participant uses his strategy. This
strategy is called a registered strategy, and the use of a registered strategy by
another participant can now be made beneficial to its inventor (the first
participant), e.g., by giving the inventor bonus points in his next or current
session, by giving a relevant user a handicap in the next or current session,
“or by otherwise modifying or adapting the rules of the game for the user
and/or inventor” of the strategy. Para. [0032].

PRINCIPLES OF LAW
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
Appeal 2009-003044
Application 11/203,358

7
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)

ANALYSIS
Appellants do not contest that a change in rules or scoring, or a
change that rewards a participant or penalizes a participant, are within the
scope of changes of content for which a conditional license is applicable in
the claimed playback system. These types of changes of content fall within
the changes exemplified in paras. [0018] and [0025-0031] of Appellants’
Specification. Appellants concede that for another or second participant, a
runtime state, i.e., the use of a registered strategy developed by another, may
be used to construct limitations on content rights in Shteyn. Brief 8:12-13.
For example, as explained in the Findings above, use of a registered strategy
by another can modify game play, i.e., generate a new conditional license,
by, for example, giving the relevant user a handicap in the current session.
Thus Appellants are in error when they state on page 8 of the brief that
“[t]he runtime state is then irrelevant for the purposes of generating a
license.” Brief 8 (emphasis in original). To put it simply, the runtime state in
Shteyn informs the license generator that a registered strategy is in use, and
a license generator may give the relevant user a handicap in the current
session.
Appeal 2009-003044
Application 11/203,358

8
While we concede that this process only occurs when a user uses a
registered strategy, it does show that the system or license generator
contemplated by Shteyn has the capability of using a runtime state for the
purpose of generating a license or changing a license status. A capability of
the system to function in the manner claimed is sufficient evidence to
establish a prima facie case of obviousness with respect to Appellants’
claimed system. Thus, it is our conclusion that the Appellants have not
established that the Examiner erred in rejecting claim 11 on the combined
teachings of Inoue and Shteyn. The rejection of claims 11-13 and 16 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2009).
AFFIRMED

Vsh

PERKINS COIE LLP
P.O. BOX 1208
SEATTLE, WA 98111-1208