Ex Parte Aydar et al

Patent Trial and Appeal BoardNov 20, 2012

11740903 (P.T.A.B. Nov. 20, 2012)

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. 11/740,903 04/26/2007 Ali Aydar 257.49-US-U3 1997 105454 7590 11/21/2012 Gates & Cooper LLP - Specific Media/Myspace 6701 Center Drive West, Suite 1050 Los Angeles, CA 90045 EXAMINER LEVINE, ADAM L ART UNIT PAPER NUMBER 3625 MAIL DATE DELIVERY MODE 11/21/2012 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 1 ___________ 2 3 BEFORE THE PATENT TRIAL AND APPEAL BOARD 4 ___________ 5 6 Ex parte ALI AYDAR, 7 DAVID ROWLEY, 8 JORDAN MENDELSON, 9 RICHARD FLETCHER, 10 DANIEL RACANELLI, 11 and JASON TOFFALETTI 12 ___________ 13 14 Appeal 2011-002954 15 Application 11/740,903 16 Technology Center 3600 17 ___________ 18 19 20 Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 21 BIBHU R. MOHANTY, Administrative Patent Judges. 22 23 FETTING, Administrative Patent Judge. 24 25 26 DECISION ON APPEAL27 Appeal 2011-002954 Application 11/740,903 2 STATEMENT OF THE CASE1 1 Ali Aydar, David Rowley, Jordan Mendelson, Richard Fletcher, 2 Daniel Racanelli, and Jason Toffaletti (Appellants) seek review under 3 35 U.S.C. § 134 of a final rejection of claims 1-3 and 5-20, the only claims 4 pending in the application on appeal. We have jurisdiction over the appeal 5 pursuant to 35 U.S.C. § 6(b). 6 The Appellants invented a way for facilitating transactions involving 7 at least one digital asset, based on the verification (Spec. 2:Summary). 8 An understanding of the invention can be derived from a reading of 9 exemplary claim 1, which is reproduced below [bracketed matter and some 10 paragraphing added]. 11 1. A method, comprising: 12 [1] receiving, 13 utilizing a network, 14 a request 15 from one of a plurality of entities 16 which each has an interest in at least one digital 17 asset; 18 [2] automatically verifying an eligibility of the entity; 19 and 20 [3] conditionally providing an interface 21 for the entity 22 for facilitating transactions involving the at least one 23 digital asset, 24 based on the verification; 25 [4] wherein the transactions include at least one of 26 a purchase 27 and 28 a download 29 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed April 19, 2010) and Reply Brief (“Reply Br.,” filed September 23, 2010), and the Examiner’s Answer (“Ans.,” mailed July 23, 2010). Appeal 2011-002954 Application 11/740,903 3 of the at least one digital asset. 1 2 The Examiner relies upon the following prior art: 3 Colvin US 2004/0117631 A1 Jun. 17, 2004 4 Claims 1, 18, and 19 stand rejected under 35 U.S.C. § 112, second 5 paragraph, as failing to particularly point out and distinctly claim the 6 invention. 7 Claims 1-3, 5-17, and 20 stand rejected under 35 U.S.C. § 101 as 8 directed to non-statutory subject matter. 9 Claims 1-3 and 5-20 stand rejected under 35 U.S.C. § 102(b) as 10 anticipated by Colvin. 11 ISSUES 12 The issue of indefiniteness turns whether on the word “conditionally” 13 refers to the condition “based on the verification.” The issues of novelty 14 turn primarily on the breadth of the term “interface.” 15 FACTS PERTINENT TO THE ISSUES 16 The following enumerated Findings of Fact (FF) are believed to be 17 supported by a preponderance of the evidence. 18 Facts Related to the Prior Art 19 Colvin 20 01. Colvin is directed to securing software, which includes various 21 types of digital content and/or information, to reduce unauthorized 22 use. Various implementations include one or more authentication 23 or authorization codes associated with the software/digital content 24 as well as a particular user or device used to access the digital 25 content during registration and/or acquisition of the digital 26 content. An authorized administrator may monitor and/or enforce 27 Appeal 2011-002954 Application 11/740,903 4 compliance with licensing terms as desired by requiring 1 subsequent authorization codes and/or requiring an appropriate 2 authorization or authentication code to access the digital content. 3 The authorized administrator functions may also optionally 4 include transferring information to a user or user device that may 5 include marketing, promotional, or other information. The 6 authorized administrator functions may be performed remotely 7 over a wireless or wired local or wide area public or proprietary 8 network, or locally on the user's device or a trusted local or wide 9 area network connected to the user device. This provides for 10 authentication of any type of software at the user's system or 11 closely related trusted network either independently or in 12 conjunction with a remote authorized representative. 13 Authentication performed solely within the user system requires 14 that little or no authentication information be transferred from the 15 user's machine to any remote representative. All authentication 16 functions may be resident in the user's machine with additional 17 functionality selectively applied utilizing a remote authorized 18 representative or authorized representative module as a particular 19 publisher or user may desire. Colvin, para. 0016. 20 02. Colvin’s Figure 1 is a block diagram illustrating a general 21 authentication process. A computer readable storage medium 22 source is acquired by a user, and may or may not include protected 23 software/digital content. For a user downloading digital content, 24 the transfer may take place without any intervention required by 25 the user, or may require the user to initiate the download, specify a 26 Appeal 2011-002954 Application 11/740,903 5 destination, etc. Additional activation steps may also be required 1 such as entry of a first activation code, activation key, etc. The 2 requirement of entry of additional activation or authentication 3 codes may also follow the authentication process of Colvin. 4 Colvin, para. 0105. 5 03. The user transfers and installs software/digital content from the 6 computer readable storage medium to another hardware device in 7 response to specific user actions or may be performed 8 transparently to the user depending upon the particular application 9 and implementation. Similarly, transferring and installing the 10 software may be performed in discrete steps or functions or in a 11 single integrated, automated, or combined step. During the 12 transfer and/or installation of digital content from the computer 13 readable storage medium, registration information may be 14 collected or supplied, and preferably includes at least some 15 information that can be obtained without intervention by the user 16 to improve veracity of the registration information. In addition, 17 some registration information is preferably associated with a 18 hardware device that is currently or subsequently receiving the 19 software/digital content. Hardware specific information such as 20 an electronic serial number that uniquely identifies the device may 21 be obtained automatically or through manual user entry or 22 selection. Device specific information may be combined with 23 user information and coded to produce a unique identification 24 code. The identification code may be further encrypted or 25 otherwise hidden to inhibit unauthorized duplication that would 26 Appeal 2011-002954 Application 11/740,903 6 allow subsequent illegally “‘authorized’” use of the 1 software/digital content. Colvin, para. 0106. 2 04. An authorized representative (AR) for the software/digital content 3 creates an authentication code (AC). Depending upon the 4 particular application, the authorization code or codes may be 5 generated and locked prior to downloading, unpacking, installing, 6 etc., to prevent content from residing freely on the users system or 7 device. Accordingly, if the content is transferred to an 8 unauthorized system, the authorization or authentication code is 9 also transferred to the unauthorized user's system. This will 10 prevent use of the content on the unauthorized user's system when 11 a comparison of the authentication code, which is based on 12 registration information including hardware, user, or other device 13 specific information of the original authorized user, will not be the 14 same as that on the unauthorized user's system. Colvin, para. 15 0107. 16 05. Generation of the authentication code or codes may take place at a 17 remote authorized representative server or module, or may be 18 generated by an authorized representative module downloaded and 19 installed on the user's device, to authenticate and encode any 20 future downloaded file or files, or may be attached to each 21 individual file or group of files, for example. In addition, whether 22 generated locally or remotely, alternate authorized device codes 23 may be included to allow access or use of the digital content on 24 one or more of these authorized devices. Such authorization codes 25 will allow use of the software including music, text, video, 26 Appeal 2011-002954 Application 11/740,903 7 applications or systems programs, games, and the like on any one 1 or more of the authorized devices. In any device that cannot be 2 authenticated, such as may occur with older or incompatible 3 devices, users may or may not be allowed to access the content 4 depending upon the particular compliance actions or rules 5 implemented by the authorized representative as described in 6 greater detail below. Colvin, para. 0108. 7 06. User system, network, or device may subsequently be used to 8 perform various additional authentication processes with a 9 resident authorized representative module or device. In general, 10 the user transfers or otherwise accesses the protected content using 11 system 342. Various user actions may trigger a first 12 authentication, a second, and/or subsequent authentications that 13 may be based on an authorization interval, rental period, trial use, 14 try-before-you-buy, or other periodic interval. Each of the 15 authentication processes generally proceeds in a manner as 16 previously described. If the authentication process detects what is 17 perceived to be an unauthorized access or use, various compliance 18 functions may be performed as generally represented by blocks 19 368, 426, and 394. Colvin, para. 0181. 20 ANALYSIS 21 Claims 1, 18, and 19 rejected under 35 U.S.C. § 112, second paragraph, as 22 failing to particularly point out and distinctly claim the invention. 23 We are persuaded by the Appellants’ argument that the word 24 “conditionally” refers to the condition “based on the verification.” Appeal 25 Br. 5. 26 Appeal 2011-002954 Application 11/740,903 8 Claims 1-3 and 5-20 rejected under 35 U.S.C. § 102(b) as anticipated by 1 Colvin. 2 The Examiner found claim 1 to be sufficiently broad to read on a 3 generic digital asset authorization for a retail transaction, which Colvin 4 clearly describes. We are not persuaded by the Appellants’ argument that 5 Colvin fails to describe conditionally providing an interface for the entity for 6 facilitating transactions involving the at least one digital asset, based on the 7 verification. Appeal Br. 6-8. 8 This does not limit the condition itself, other than there be some 9 relationship to verification, however tangential, and certainly does not limit 10 how the condition is tested or otherwise detected. More importantly, the 11 claim does not limit the manner in which the execution flow is affected by 12 the condition. Every instruction in a traditional sequential instruction flow 13 inherent in every von Neumann architecture processor, which includes 14 almost all commercial computers, is conditioned on the execution of those 15 instructions preceding it. Every set of instructions following any traditional 16 form of user identification and authentication is also conditioned upon 17 successful identification and authentication. Thus, the condition and 18 branching in the claim is trivially met by Colvin, which uses both 19 conventional processors and a form of authentication. 20 The argument appears centered around the word “interface,” but an 21 interface is anything that goes between other things, because it faces both 22 ways with – intra – those things. Every line of computer code is an interface 23 in that regard. The claim does not narrow the nature of the interface in the 24 claim. Certainly, Colvin provides some mechanism for data transfer 25 Appeal 2011-002954 Application 11/740,903 9 subsequent to verification. FF 06; Ans. 10. Whatever this mechanism is, it 1 is an interface between the machine and the transfer process that it executes. 2 As to separately argued dependent claims 5 and 9-14, we adopt the 3 Examiner’s findings and analysis from Answer pages 7-16 and reach similar 4 legal conclusions. As with claim 1, Appellants’ arguments are not 5 commensurate with the scope of these claims. 6 Claims 1-3, 5-17, and 20 rejected under 35 U.S.C. § 101 as directed to non-7 statutory subject matter. 8 As we find the rejections of all the claims to be proper under 9 obviousness, we do not reach the cumulative issue of statutory subject 10 matter as to these same claims. 11 CONCLUSIONS OF LAW 12 The rejection of claims 1, 18, and 19 under 35 U.S.C. § 112, second 13 paragraph, as failing to particularly point out and distinctly claim the 14 invention is improper. 15 The rejection of claims 1-3 and 5-20 under 35 U.S.C. § 102(b) as 16 anticipated by Colvin is proper. 17 The rejection of claims 1-3, 5-17, and 20 under 35 U.S.C. § 101 as 18 directed to non-statutory subject matter is not reached. 19 DECISION 20 The rejection of claims 1-3 and 5-20 is affirmed. 21 No time period for taking any subsequent action in connection with 22 this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 23 § 1.136(a)(1)(iv) (2011). 24 25 AFFIRMED 26 27 Appeal 2011-002954 Application 11/740,903 10 hh 1