Raley, Michael et al.

Patent Trials and Appeals Board

Aug 14, 2019

10990756 - (D) (P.T.A.B. Aug. 14, 2019)

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.
10/990,756 11/18/2004 Michael Raley 10-559-US-2 4210
128144 7590 08/14/2019
Rimon PC
One Embarcadero Center
Suite 400
San Francisco, CA 94111
EXAMINER
NEUBIG, MARGARET M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
08/14/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing.rimonlaw@clarivate.com
eofficeaction@appcoll.com
patentdocketing@rimonlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL RALEY and EDDIE J. CHEN
____________

Appeal 2018-007608
Application 10/990,7561
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE2
Michael Raley and Eddie J. Chen (Appellants) seek review under
35 U.S.C. § 134(a) of a final rejection of claims 201–203, 205–207, 209–
212, 214–216, 218, 226, 229, and 230, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).

1 According to Appellants, the real party in interest is ContentGuard
Holdings, Inc. (Appeal Br. 2).

2 Our Decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed February 19, 2018) and Reply Brief (“Reply Br.,” filed July 21,
2018), and the Examiner’s Answer (“Ans.,” mailed June 1, 2018), and Final
Action (“Final Act.,” mailed October 18, 2017).
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The Appellants invented a way of storage of, access to, and
management of licenses for digital content. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 201, which is reproduced below (bracketed matter and
some paragraphing added).
201. A method implemented by one or more computing devices
for controlling use of digital content, the method comprising:
[1] receiving, by at least one of the one or more computing
devices,
information indicating a license associated with content;
[2] presenting, by at least one of the one or more computing
devices,
an icon representative of the license on a user interface;
[3] receiving, by at least one of the one or more computing
devices,
a selection of the license through the user interface;
[4] receiving, by at least one of the one or more computing
devices,
a selection through the user interface of a device
executing a rendering application
capable of rendering at least one type of content,
wherein the device executing a rendering application is
configured to identify an instance of the content
associated with the selected license and of the at least one
type renderable by the rendering application;
and
[5] in response to the selection of the rendering application,
retrieving, by the device executing a rendering
application,
the instance of the content associated with the
selected license
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and
rendering, by the rendering application,
the instance of the content in accordance with the
selected license,
wherein the instance of the content associated with the
selected license is retrieved from a device that is remote
from the device executing the rendering application.
The Examiner relies upon the following prior art:
Toh US 2003/0058284 A1 Mar. 27, 2003
McKee US 2004/0155901 A1 Aug. 12, 2004
Ishii US 2005/0021783 A1 Jan. 27, 2005
Microsoft, Getting Started with Microsoft Windows 98, Second Edition
(“Windows”).

Claims 201–203, 205–207, 209–212, 214–216, 218, 226, 229, and 230
stand rejected under 35 U.S.C. § 101 as directed to a judicial exception
without significantly more.
Claims 201–203, 205–207, 209–212, 214–216, 218, 226, 229, and 230
stand rejected under 35 U.S.C. § 112 (pre-AIA), second paragraph, as failing
to particularly point out and distinctly claim the invention.
Claims 201–203, 205–207, 209–212, 214–216, 218, 229, and 230
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Ishii, McKee,
and Windows.
Claim 226 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Ishii, McKee, Toh, and Windows.3

3 An additional rejection under 35 U.S.C. § 112 (pre-AIA), first paragraph,
(Final Act. 18) was withdrawn. Ans. 4.
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ISSUES
The issues of eligible subject matter turn primarily on whether the
claim is amenable to construction.
The issues of indefiniteness matter turn primarily on whether the
claim is amenable to construction.
The issues of obviousness turn primarily on whether the claim is
amenable to construction.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Appellants’ Disclosure
01. With the exemplary embodiments consumers acquire (e.g.,
purchase, rent, exchange, and subscribe) licenses for content, and
can use such licenses to use (e.g., consume, render, distribute, and
share) the content, regardless of the consuming application or
device used, the content distribution media, the DRM system used
to enforce licensing terms, and the like. For example, a consumer
can purchase a license for watching a movie, and such license
need not be tied to a particular embodiment of such movie, such as
a DVD. If the same movie is available on a different media, such
as a pay-per-view broadcast or a high-definition DVD, the license
of the consumer is still valid for watching that movie, assuming
the license does permit such rendition. In a further example, the
consumer acquires a license to play a movie on any devices within
his home domain. The license can be represented as an icon on
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his desktop. When the license icon is dropped to DRM Player I
(e.g., Real Player), the movie plays on his PC monitor. When the
same license icon is dragged to DRM Player II (e.g., Windows
Media Player), the movie also plays (e.g., on a large screen TV
driven by DRM Player II). The DRM Players fetch the content
(e.g., as required) associated with the license suited for its
rendering environment. By the same token, when the license is
transferred to a mobile phone or a portable player, these devices
also can fetch (e.g., as required) and render the content, as long as
the devices belong to the home domain. This is much more
convenient to the consumers than the state of the art ORM
systems. Spec. para. 31.
ANALYSIS
Claims 201–203, 205–207, 209–212, 214–216, 218, 226, 229, and 230
rejected under 35 U.S.C. § 112 (pre-AIA), second paragraph, as failing to
particularly point out and distinctly claim the invention
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
We reproduce relevant parts of limitations 3–5 of claim 201.
[3] receiving, by at least one of the one or more computing
devices,
a selection of the license through the user interface;
[4] receiving, by at least one of the one or more computing
devices,
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a selection through the user interface of a device
executing a rendering application
capable of rendering at least one type of content,
wherein . . . ;
and
[5] in response to the selection of the rendering application,
retrieving, by the device executing a rendering
application,
. . .
. . .
The remaining independent claim, claim 210, has limitations with
similar phrasing. The Examiner determines that the limitation 4 is not
amenable to construction. Final Act. 26; Ans. 22–23.
Limitation 4 may appear straight forward until grammatically parsed.
A quick reading might lead one to interpret it as receiving a selection
through the user interface of a device. But on reflection, one sees that what
is selected is left unidentified. An alternate reading is selecting a device
through the user interface initially set out in limitation 2. In this reading, a
device, rather than a rendering application, is selected. The selected device
executes a rendering application. The claim does not recite how the device
determines the rendering application to execute. The rendering application
just happens to be one that is executing on a selected device. So limitation 4
recites either selecting a device, or selecting something left unidentified.
The Specification supports either construction. FF 01.
Limitation 5 then begins “in response to the selection of the rendering
application.” From the prior analysis, what is immediately apparent is the
claim recites no such selection of a rendering application. Limitation 3
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selects a license. Limitation 4 selects a device or does not say what is
selected. There are no other selections recited.
Appellants argue first that “[t]he claimed ‘receiving . . . a selection of
the license through the user interface’ is the selection of the icon indicating a
license.” App. Br. 21. We agree, but this is not the issue. Appellants next
argue that “it is not clear why a device executing a rendering application is
not clear. It is a) a device and b) it executes a rendering application. The
claims expressly recite selection of a rendering application, not a consuming
application. It is not clear why the Examiner finds this confusing.” App. Br.
22 (emphasis added). The problem with this argument is that the claims do
not expressly recite selection of a rendering application.
From the prosecution history, it appears the claims did so until the
most recent Amendment filed July 31, 2017. But, that Amendment changed
what was selected, and did not change the limitation 5 criteria accordingly.
The recited rendering application in limitation 4 shifted from being on object
of selection to being an object of executing. The object of the limitation 4
selection became ambiguous, but was no longer the recited rendering
application. As a result, the first clause of limitation 5 is now a non sequitur.
Thus, there is no way to determine what is selected in limitation 4 and
there is no selection of a rendering application that limitation 5 depends on,
rendering the claim indefinite. It also appears that the particular selection
sequence is what is purported to be inventive. App. Br. 27. Without
commenting on the eligibility of this as inventive subject matter, this at least
demonstrates that it is necessary to know what is selected and when it is
selected in the claims to evaluate the patentability of the claims. Because
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both independent claims fail to recite this, one of ordinary skill cannot
understand what the invention is.
Claims 201–203, 205–207, 209–212, 214–216, 218, 226, 229, and 230
rejected under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more
As a procedural matter, we reverse the rejection of claims 201–203,
205–207, 209–212, 214–216, 218, 226, 229, and 230 under § 101. A
rejection of a claim, which is so indefinite that “considerable speculation as
to meaning of the terms employed and assumptions as to the scope of such
claims” is needed, is likely imprudent. See In re Steele, 305 F.2d 859, 862
(CCPA 1962) (holding that the examiner and the board were wrong in
relying on what at best were speculative assumptions as to the meaning of
the claims and basing a rejection under 35 U.S.C. § 103 thereon.) We find it
imprudent to speculate as to the scope of claims 201–203, 205–207, 209–
212, 214 –216, 218, 226, 229, and 230 in order to reach a decision on the
eligibility of the claimed subject matter under § 101. It should be
understood, however, that our reversal is based on the indefiniteness of the
claimed subject matter and does not reflect on the merits of the underlying
rejection.

Claims 201–203, 205–207, 209–212, 214–216, 218, 229, and 230 rejected
under 35 U.S.C. § 103(a) as unpatentable over Ishii, McKee, and Windows
As a procedural matter, we reverse the rejection of claims 201–203,
205–207, 209–212, 214–216, 218, 229, and 230 under § 103. A rejection of
a claim, which is so indefinite that “considerable speculation as to meaning
of the terms employed and assumptions as to the scope of such claims” is
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needed, is likely imprudent. See In re Steele, supra. We find it imprudent to
speculate as to the scope of claims 201–203, 205–207, 209–212, 214–216,
218, 229, and 230 in order to reach a decision on the obviousness of the
claimed subject matter under § 103. It should be understood, however, that
our reversal is based on the indefiniteness of the claimed subject matter and
does not reflect on the merits of the underlying rejection.

Claim 226 rejected under 35 U.S.C. § 103(a) as unpatentable over Ishii,
McKee, Toh, and Windows
This claim depends from claim 201 and, is therefore, similarly not
amenable to construction.
CONCLUSIONS OF LAW
The rejection of claims 201–203, 205–207, 209–212, 214 –216, 218,
226, 229, and 230 under 35 U.S.C. § 112 (pre-AIA), second paragraph as
failing to particularly point out and distinctly claim the invention is
improper.
The rejection of claims 201–203, 205–207, 209–212, 214–216, 218,
226, 229, and 230 under 35 U.S.C. § 101 as directed to a judicial exception
without significantly more is improper.
The rejection of claims 201–203, 205–207, 209–212, 214–216, 218,
229, and 230 under 35 U.S.C. § 103(a) as unpatentable over Ishii, McKee,
and Windows is improper.
The rejection of claim 226 under 35 U.S.C. § 103(a) as unpatentable
over Ishii, McKee, Toh, and Windows is improper.
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DECISION
The rejection of claims 201–203, 205–207, 209–212, 214 –216, 218,
226, 229, and 230 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) (2011).
AFFIRMED