10703149 (B.P.A.I. Jan. 28, 2011)

Ex Parte Yen et al

Board of Patent Appeals and InterferencesJan 28, 2011

10703149 (B.P.A.I. Jan. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 10/703,149 11/05/2003 Wei Yen 57159-8007.US01 9546 69849 7590 01/28/2011 SHEPPARD, MULLIN, RICHTER & HAMPTON LLP 390 Lytton Avenue Palo Alto, CA 94301 EXAMINER CHEUNG, MARY DA ZHI WANG ART UNIT PAPER NUMBER 3694 MAIL DATE DELIVERY MODE 01/28/2011 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte WEI YEN, DAVID BLYTHE, JOHN PRINCEN, and PRAMILA SRINIVASAN ____________________ Appeal 2009-005956 Application 10/703,149 Technology Center 3600 ____________________ Before: WILLIAM F. PATE III, KEN B. BARRETT, and FRED A. SILVERBERG, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 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 2009-005956 Application 10/703,149 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 80, 82-99, 133, 135-140, 157-162, and 164-169. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a dynamic licensing system for licensing digital content rights based on a saved state of the content being executed. Claim 80, reproduced below, is illustrative of the claimed subject matter: 80. A method comprising: providing first content for a playback device; providing a license that includes rights for the first content and a rule associated with a state of execution of the first content; executing, according to the rights for the first content, the first content on the playback device to reach a state of execution of the first content; saving the state; stopping execution of the first content; determining rights or permissions for second content based on the saved state and the rule associated with the state of execution, wherein the first content and the second content are distinct; launching the second content for execution. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Stefik Inoue Rubin US 2001/0014882 A1 US 2003/0028622 A1 US 2003/0114227 A1 Aug. 16, 2001 Feb. 6, 2003 Jun. 19, 2003 Appeal 2009-005956 Application 10/703,149 3 REJECTIONS Claims 80, 82, 87-99, 133, 135-137, 139, 140, 157-162, 165, 168, and 169 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rubin and Inoue. Ans. 3. Claims 83-86, 138, 164, 166 and 167 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Rubin, Inoue, and Stefik. Ans. 9. OPINION We have carefully reviewed the rejections on appeal in light of the arguments of the Appellants and the Examiner. As a result of this review we have determined that the applied prior art does not establish the prima facie obviousness of the appealed claims. Therefore the rejections on appeal are reversed. Our reasons follow. We construe the term “license” as it appears in independent claims 80 and 165 to include the claimed rule associated with the state of execution of the first content. We do not find that either Rubin or Inoue disclose the claimed rule as part of their licenses. Since the invention is directed to a license with the claimed rule therein, we reverse the rejection on appeal. On page 12 of the Answer, the Examiner equates the claimed rule to the permission to proceed to game area B when game area A has been successfully completed in Rubin. We agree that area A and area B can be construed as first and second content based on the definition of content found on page 20 of the Specification. However, as pointed out by Appellants, the if/then conditional statement that allows the person permission to enter area B of the game of Rubin is part of the application program. See App. Br. 14. Thus, under the definition already established, the right is part of the content of Rubin rather than part of any license. Appeal 2009-005956 Application 10/703,149 4 Along this line, we note the architecture of both Inoue’s and Appellants’ systems where the content and the license maintain their distinct identities and are served by different servers. Inasmuch as we construe independent claims 80 and 165 to require that the rights are part of the license, rather than part of the content, as disclosed in Rubin, we are constrained to reverse the rejection of both the method and system claims on appeal. DECISION The 35 U.S.C. § 103(a) rejection of claims 80, 82-99, 133, 135-140, 157-162, and 164-169 are reversed. REVERSED nlk SHEPPARD, MULLIN, RICHTER & HAMPTON LLP 390 Lytton Avenue Palo Alto CA 94301