Ex Parte Raley et al

Patent Trial and Appeal Board

Apr 15, 2013

10425941 (P.T.A.B. Apr. 15, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MICHAEL RALEY, DANIEL CHEN,
HSI-CHENG WU, and THANH TA
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Appeal 2010-011238
Application 10/425,941
Technology Center 2400
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Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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Application 10/425,941

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STATEMENT OF THE CASE
Appellants' claimed invention is related to distribution of digital
content and, more particularly, to a method and apparatus for facilitating
distribution of protected documents displayed with the rendering engine of a
standard application program, such as an Internet Web Browser. (Spec.
[0002])
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A method of protecting dynamic content in a
system for managing use of the content in accordance with
usage rights associated with the content, said method
comprising:

receiving a request from a user device for access to
content that dynamically changes, wherein the content is stored
on a server;

gathering information from at least one source to build
the content in accordance with the request;

mapping the content to one or more usage rights based on
the characteristics of the request;

sending a reply including the usage rights to the user
device; and

permitting use of the content based on the usage rights
under control of a security module for enforcing usage rights.

REFERENCES and REJECTIONS
The Examiner rejected claims 10-20 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
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The Examiner rejected claim 20 under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
The Examiner rejected claims 1-29 under 35 U.S.C. § 103(a) based
upon the teachings of Gruse (US Pat. No. 6,389,538 B1, May 14, 2002) in
view of Livingston (US Pat. No. 6,424,979 B1, July 23, 2002).

ANALYSIS
35 U.S.C. § 112, SECOND PARAGRAPH
The Examiner maintains:
[L]imitations of claims 10-20 use the phrase "means for", but it
is modified by some structure, material, or acts recited in the
claims. It is unclear whether the recited structure, material, or
acts are sufficient for performing the claimed functions which
would preclude application of 35 U.S.C. 112, sixth paragraph,
because the specification does not provide any specific structure
closely associated to the recited functions in these claims. There
are no descriptions in the disclosure for means (i.e., structure)
that is used for the following functions . . . .

(Ans. 3). Appellants provide a new Summary of the Claimed Subject Matter
with respect to independent claim 10, and Appellants maintain that the
various "means" limitations are described in paragraph [0103] and
corresponding flowchart in figure 17. (Reply Br. 1-4, 6-7). Additionally,
most of the means limitations interact with "security module 237." (Reply
Br. 6-7). We find no algorithm or detailed flowchart for the operation of the
security module 237 which appears to be the structure and acts that performs
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the functions recited in the various means limitations.1 Since we find no
algorithm or detailed flowchart for the operation of the security module 237,
we agree with the Examiner that independent claim 10 and dependent claims
11-20 are indefinite since the Specification does not describe the structure
associated with the recited "means for" elements.

35 U.S.C. § 101
The Examiner maintains that the type of media recited in claim 20 is
not clearly defined in the Specification. In view of paragraph [0005] of the
Specification, relied upon by Appellants, the media could be any variety of
media including a signal or a carrier wave which is non-patentable subject
matter. (Ans. 4). Claim 20 recites the "system of claim 10, wherein said
means for receiving, said means for gathering, said means for mapping, said
means for sending, and said means for permitting comprise computer
readable instructions recorded on a media."
Appellants merely repeat paragraphs [0005] and [0006] from the
Specification and maintain that the claim language "clearly falls within the
scope of statutory subject matter as set forth in 35 U.S.C. § 101." (Reply Br.
8). We find Appellants' general argument to be unavailing.

Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.

1 See e.g., Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed.
Cir. 2008); AllVoice Computing PLC v. Nuance Commc’ns, Inc., 504 F.3d
1236, 1245 (Fed. Cir. 2007).
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35 U.S.C. § 101.
"The four categories [of § 101] together describe the exclusive reach
of patentable subject matter. If a claim covers material not found in any of
the four statutory categories, that claim falls outside the plainly expressed
scope of § 101 even if the subject matter is otherwise new and useful." In re
Nuijten, 500 F.3d 1346, 1354 (Fed. Cir. 2007).
We refer Appellants to the February 23, 2010 "Subject Matter
Eligibility of Computer Readable Media," 1351 Off. Gaz. Pat. Office 212
(Feb. 23, 2010), policy statement by former USPTO Director David J.
Kappos, as published in the Official Gazette of the United States Patent and
Trademark Office (USPTO) (reproduced below). Under current USPTO
policy, the following guidelines are applicable to claim 1 on appeal:

Subject Matter Eligibility of Computer Readable Media
The United States Patent and Trademark Office (USPTO)
is obliged to give claims their broadest reasonable interpretation
consistent with the specification during proceedings before the
USPTO. See In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) (during
patent examination the pending claims must be interpreted as
broadly as their terms reasonably allow). The broadest
reasonable interpretation of a claim drawn to a computer
readable medium (also called machine readable medium and
other such variations) typically covers forms of non-transitory
tangible media and transitory propagating signals per se in view
of the ordinary and customary meaning of computer readable
media, particularly when the specification is silent. See MPEP
2111.01. When the broadest reasonable interpretation of a claim
covers a signal per se, the claim must be rejected under 35
U.S.C. § 101 as covering non-statutory subject matter. See In re
Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory
embodiments are not directed to statutory subject matter) and
Interim Examination Instructions for Evaluating Subject Matter
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Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2.
The USPTO recognizes that applicants may have claims
directed to computer readable media that cover signals per se,
which the USPTO must reject under 35 U.S.C. § 101 as
covering both non-statutory subject matter and statutory subject
matter. In an effort to assist the patent community in
overcoming a rejection or potential rejection under 35 U.S.C. §
101 in this situation, the USPTO suggests the following
approach. A claim drawn to such a computer readable medium
that covers both transitory and non-transitory embodiments may
be amended to narrow the claim to cover only statutory
embodiments to avoid a rejection under 35 U.S.C. § 101 by
adding the limitation "non-transitory" to the claim. Cf. Animals
- Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987)
(suggesting that applicants add the limitation "non-human" to a
claim covering a multi-cellular organism to avoid a rejection
under 35 U.S.C. § 101). Such an amendment would typically
not raise the issue of new matter, even when the specification is
silent because the broadest reasonable interpretation relies on
the ordinary and customary meaning that includes signals per
se. The limited situations in which such an amendment could
raise issues of new matter occur, for example, when the
specification does not support a non-transitory embodiment
because a signal per se is the only viable embodiment such that
the amended claim is impermissibly broadened beyond the
supporting disclosure. See, e.g., Gentry Gallery, Inc. v. Berkline
Corp., 134 F.3d 1473 (Fed. Cir. 1998).

Id., available at
http://www.uspto.gov/web/offices/com/sol/og/2010/week08/TOC.htm#ref20

Because Appellants' Specification is silent regarding the medium, we
conclude the scope of the claimed "means" is not limited to only statutory
embodiments but also broadly covers non-statutory embodiments (wireless
transmission using radio frequency or optical signals or carriers). As set
forth in the USPTO guidance above, a claim drawn to such a computer
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readable medium that covers both transitory and non-transitory
embodiments may be amended to narrow the claim to cover only statutory
embodiments to avoid a rejection under 35 U.S.C. § 101 by adding the
limitation "non-transitory" to the claim. (Id.). Therefore, Appellants'
argument does not show error in the Examiner's conclusion of a lack of
statutory subject matter of claim 20.2

35 U.S.C. § 103
With respect to independent claims 1, 10, and 21, Appellants address
the claims as a single group. (App. Br. 5-14). Therefore, we select
independent claim 1 as the representative claim for the group and will
address Appellants' arguments thereto.
Appellants maintain that neither the Gruse reference nor the
Livingston reference disclose or suggest "content that dynamically changes,
wherein the content is stored on a server" as recited in independent claim 1.
(App. Br. 7-10). Appellants maintain that while the Gruse reference
discloses content that is stored on a server for distribution, that content is
prepackaged and static and is not dynamic. (App. Br. 8).
Appellants additionally contend that the Livingston reference is
merely an example of the type of system disclosed in Appellants'
Specification at paragraph [0103]. (App. Br. 9-10). The Examiner
maintains that the Livingston reference is relied upon to teach the dynamic
changes. (Ans. 10). Furthermore, Appellants' arguments regarding their

2 We note that claim 20 should be considered an independent claim since it is
directed to a different statutory class of invention than independent claim 10
and does not further limit the system recited in independent claim 10.
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Specification do not show error in the Examiner's reasoned conclusion of
obviousness based upon the teachings of the Gruse reference and the
Livingston reference.
Appellants contend that neither the Gruse reference nor the Livingston
reference disclose or suggest "gathering information from at least one source
to build the content in accordance with the request." (App. Br. 10). First,
we note that the language of independent claim 1 merely recites "gathering
information from at least one source to build the content in accordance with
the request," rather than "generated." The Examiner maintains that the
Gruse reference teaches at various portions, including columns 20, 50, and
52, and Figure 8 which displays the process of preparation of a requested
content, that content may be generated in response to a request. (Ans. 12).
The Examiner also identifies columns 2 and 6 of the Livingston reference
regarding assembling information on-the-fly based upon a user request.
(Id.). Appellants maintain that the Examiner's reliance upon the Gruse
reference reinforces Appellants' position since these portions of the Gruse
reference relate to new content request initiated by the content provider not
the content consumer.
We disagree with Appellants and observe that the content consumer is
not recited in the language of independent claim 1. Appellants additionally
argue there is no suggestion in these portions of the Gruse reference that "the
content is packaged or generated in response to a request from an end user
device." (App. Br. 11). Additionally, we note there may be numerous
"users" and types of users within a system which need not necessarily be the
end content consumer or end user device. Because Appellants' argument is
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not commensurate in scope with the broader claim language, on this record,
we are not persuaded of error in the Examiner's conclusion of obviousness.
Appellants maintain that the Livingston reference is merely an
example of a system from Appellants' Specification in paragraph [0103] and
does not overcome the deficiencies of the Gruse reference. (App. Br. 12).
Again, Appellants' argument is not persuasive of error in the Examiner's
conclusion of obviousness. Appellants maintain there is no suggestion
whatsoever in the Gruse reference that the usage rights are "assigned by the
server based on the request in step 147 and returned with the content in step
148, as is set forth in the claims." (Reply Br. 10; emphasis deleted). Again,
Appellants' argument is not commensurate in scope with the express
language of independent claim 1 and is not persuasive of error in the
Examiner's conclusion of obviousness.
Appellants maintain that the Gruse reference at best "maps usage
rights to the content at the time of packaging, not based on the
characteristics of the request." (App. Br. 13-14). The Examiner identifies
further teachings at columns 9, 10, 25, and 28 of the Gruse reference.
(Ans.13). Appellants do not respond to the Examiner's additional points of
reliance. (Reply Br. 10-11). Appellants maintain that "the claimed
invention facilitates the assignment of usage rules to a request instead of the
content." (App. Br. 14). We disagree with Appellants and find that claim 1
recites "mapping the content to one or more usage rights." Therefore,
Appellants' argument is not commensurate in scope to the express language
in representative claim 1. Therefore, Appellants' argument is not persuasive
of error in the Examiner's conclusion of obviousness.
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We note that intellectually property coverage for (original) expressive
audio/visual content falls properly under existing copyright laws, once such
content is fixed in a tangible medium of expression. See Title 17 U.S.C.
§ 102 (“Subject matter of copyright: In general”).
With respect to dependent claims 2-9, 11-20, 22-29, Appellants repeat
the language of the claim and maintain patentability "by virtue of their
dependency on independent claims 1, 10, and 21." (App. Br. 15-18).
Therefore, these claims fall with their respective independent claims.

CONCLUSION
The Examiner did not err in rejecting claims 10-20 under 35 U.S.C.
§ 112, second paragraph. The Examiner did not err in rejecting claim 20
under 35 U.S.C. § 101. The Examiner did not err in rejecting claims 1-29
under 35 U.S.C. § 103.

DECISION
The Examiner’s decision rejecting claims 10-20 under 35 U.S.C.
§ 112, second paragraph, is affirmed. The Examiner’s decision rejecting
claim 20 under 35 U.S.C. § 101 is affirmed. The Examiner’s decision
rejecting claims 1-29 under 35 U.S.C. § 103 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)(1)(iv).

AFFIRMED

Pgc/peb