Ex Parte Zigmond et al

Patent Trial and Appeal Board

Jan 15, 2013

10782678 (P.T.A.B. Jan. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANIEL J. ZIGMOND, PETER T. BARRETT,
JOHN H. GROSSMAN IV, and DUSTIN L. GREEN
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Appeal 2010-003623
Application 10/782,678
Technology Center 3600
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Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-003623
Application 10/782,678

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STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-42 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM-IN-PART.

THE INVENTION
The Appellants’ claimed invention is directed to a method of digital
rights management which provides a persistent license (Spec. [0007]).
Claim 1, reproduced below, is representative of the subject matter on appeal.

1. A method comprising:
forming a request by a client to access encrypted content,
wherein:
the request includes a persistent license for communication to a
licensing server; and
the persistent license includes a key that is encrypted such that
the key is not accessible by the client; and
receiving a license in response to the request, wherein the received
license includes the key that is:
accessible by the client; and
for accessing the encrypted content.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Mohammed US 2003/0028488 A1 Feb. 6, 2003

Appeal 2010-003623
Application 10/782,678

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The following rejections are before us for review:
1. Claims 1-21 are rejected under 35 U.S.C. § 101.
2. Claims 1-42 are rejected under 35 U.S.C. § 102(e) as
unpatentable over Mohammed.

FINDINGS OF FACT
We find that the findings of fact used in the Analysis section below
are supported at least by a preponderance of the evidence:1

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellants argue that the rejection of claim 1 is improper because
the Examiner has only applied the machine or transformation test (Reply Br.
Filed Nov. 28, 2011, 7-8) and not conducted a full analysis for the rejection.
The Supreme Court clarified in Bilski v. Kappos, 130 S.Ct. 3218
(2010) that the machine-or-transformation test “is not the sole test for
deciding whether an invention is a patent-eligible ‘process' under § 101.”
Yet the Court explained that this test remains a “useful and important clue or
investigative tool.” See Bilski, 130 S.Ct. at 3221. Here, the Examiner has
only applied the machine-or-transformation test. Regardless, claim 1 here
also recites “encrypted content, wherein: the request includes a persistent
license for communication to a licensing server” which is directed to an
actual request for a licensing server which is not an abstract idea, and which

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2010-003623
Application 10/782,678

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server plays an important role in the handling of the encrypted data. Given
the context of the claim, the cited limitation is not insignificant extra
solution activity as well. For these reasons this rejection of claim 1 and its
dependent claims is not sustained. Independent claims 11 and 17 contain
similar limitations and the rejection of these claims and their dependent
claims under this rejection is not sustained as well.

Rejection under 35 U.S.C. § 102(e)
The Appellants argue that the rejection of claim 1 is improper because
the prior art fails to disclose the claim limitation that the request includes a
persistent license that includes “a key that is encrypted such that the key is
not accessible by the client” (App. Br. 18). In contrast, the Examiner has
asserted that this is shown in Mohammed at paragraphs [0016], [0017] and
[0151].
We agree with the Appellants. Mohammed at paragraphs [0016],
[0017] and [0151] fails to disclose a request that includes “a key that is
encrypted such that the key is not accessible by the client” and the rejection
cannot be sustained. The Examiner has focused on the portion of
Mohammed at paragraph [0017] which references the Key ID that identifies
the decryption key (Ans. 19). The Examiner has determined that “nowhere
did Mohammed disclose….the… key ID or decryption key…is accessible to
the client” (Ans. 19). However the cited paragraph [0017] also fails to
specifically disclose that the key ID or decryption key is not accessible by
the client as well. Based on the disclosure of paragraph [0017] a
determination if the key ID or decryption key was not accessible by the
client would require delving into probabilities and possibilities and the cited
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Application 10/782,678

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claim limitation has not been explicitly shown. For these reasons, the
rejection of claim 1 and its dependent claims is not sustained.
Claim 11 includes claim limitations that are different than those of
claim 1. In particular, claim 11 does not include the claim limitation argued
for in claim 1 that the request includes a persistent license that includes “a
key that is encrypted such that the key is not accessible by the client”
(emphasis added). The Appellants’ arguments at page 19 of the Brief
merely lists different claim limitations from claim 11 without arguing them
specifically. While the Appellants refers to the previous arguments made for
claim 1, these arguments were directed to a substantially different claim
limitation for “a key that is encrypted such that the key is not accessible by
the client” and as no substantive arguments directed to claims 11-16 have
been presented, the rejection of these claims is sustained. A statement that
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim. 37 C.F.R. 41.37(o)(1) 2008.
The Appellants also fail to provide specific arguments for claims 17-
42 as the arguments presented merely cite portions of the claim and refer to
the arguments made for claim 1. Again, these claims are substantially
different in that they do not include the claim limitation for “a key that is
encrypted such that the key is not accessible by the client”, and as no
substantive arguments have been presented, these rejections are sustained.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting: claims 1-21 under 35 U.S.C. § 101; and claims 1-16 under 35
U.S.C. § 102(e) as unpatentable over Mohammed.
Appeal 2010-003623
Application 10/782,678

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We conclude that Appellants have not shown that the Examiner erred
in rejecting: claims 17-42 under 35 U.S.C. § 102(e) as unpatentable over
Mohammed.

DECISION
The Examiner’s rejection of claims 1-16 is reversed. The Examiner’s
rejection of claims 17-42 is sustained.

AFFIRMED-IN-PART

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