Ex Parte Rantala

Patent Trial and Appeal Board

Mar 8, 2017

14130084 (P.T.A.B. Mar. 8, 2017)

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.
14/130,084 03/17/2014 Ville Rantala 800.1467,U1 (US) 3399
10948 7590 03/10/2017
Harrington & Smith, Attorneys At Law, LLC
4 Research Drive, Suite 202
Shelton, CT 06484
EXAMINER
CHANG, KENNETH W
ART UNIT PAPER NUMBER
2438
NOTIFICATION DATE DELIVERY MODE
03/10/2017 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):
USPTO@hspatent.com
Nokia. IPR @ nokia. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VILLE RANT ALA
Appeal 2016-008123
Application 14/130,084
Technology Center 2400
Before ERIC S. FRAHM, JOHN P. PINKERTON, and
SCOTT B. HOWARD, Administrative Patent Judges.
FRAHM, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2019-008123
Application 14/130,084
STATEMENT OF THE CASE
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 16—30. Claims 1—15 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Disclosed Invention and Exemplary Claim
Appellant’s disclosed invention relates to the authentication of
software accessible to mobile devices such as smart phones via connection
to remote servers over the Internet (Spec. 1:5—11). Independent claims 16,
21, 23, 27, 29, and 30 contain similar features, and recite methods,
apparatuses, and computer programs for distributing client applications to
user devices using digital rights management (DRM) technology and a
secret authentication key for requesting a remote server application (Spec.
1:5—30; Figs. 2A, 2B, 3, and 4).
Representative independent claim 16, with emphases on disputed
portions of the claim, reads as follows:
16. A method comprising:
receiving a client application for distribution to user
devices;
receiving a secret authentication key associated with the
client application, the secret authentication key for use by the
client application to secure a request made to a remote server
application that is configured to provide a service to a user
device having the client application;
securing with digital rights management technology the
secret authentication key associated with the client application;
and
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Application 14/130,084
providing an application package comprising the client
application and the secured secret authentication key
for distribution to user devices.
Examiner’s Rejection
The Examiner rejected claims 16—30 as being unpatentable under
35 U.S.C. § 103(a) over Bourne et al. (US 2004/0003270 Al; published Jan.
1, 2004) and Gupta et al. (US 2011/0099376 Al; published Apr. 28, 2011).1
Final Act. 3—28.
Principal Issue on Appeal
Based on Appellant’s arguments (App. Br. 7—39; Reply Br. 1—7), the
following principal issue is presented:
Did the Examiner err in rejecting claims 16—30 as being obvious
because the combination of Bourne and Gupta is not properly combinable to
teach or suggest a method of distributing client applications to user devices
1 Appellant presents arguments primarily as to the patentability of claim 16
(App. Br. 7—20), and presents similar arguments as to remaining independent
claims 21 (App. Br. 22—33) and 23, 27, 29, and 30 (App. Br. 37—38).
Separate patentability is not argued for claims 17, 18, and 23—30, and
Appellant relies on the arguments presented for claims 16 and 21 as to the
patentability of claims 17, 18, and 23—30 (see App. Br. 37—38). Independent
claims 16, 21, 23, 27, 29, and 30 recite similar subject matter, namely
computer programs, apparatuses, and methods for distributing client
applications to user devices using digital right management (DRM)
technology and a secret authentication key for requesting a remote server
application. We select independent claim 16 as representative of the group
of claims rejected under § 103(a) (claims 16—18 and 23—30), pursuant to our
authority under 37 C.F.R. § 41.37(c)(l)(iv). Accordingly, our analysis
herein will only address representative claim 16, and claims 19-22
separately argued.
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Application 14/130,084
using digital right management (DMR) technology and a secret
authentication key for requesting a remote server application, as set forth in
representative claim 16?
ANALYSIS
We have reviewed the Examiner’s rejection (Final Act. 3—28) in light
of Appellant’s contentions in the Appeal Brief (App. Br. 7—38) and the
Reply Brief (Reply Br. 1—7) that the Examiner has erred, as well as the
Examiner’s response to Appellant’s arguments in the Appeal Brief (Ans. 2—
17). We disagree with Appellant’s contentions. With regard to
representative claim 16, we adopt as our own (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken (Final
Act. 3—7), (2) the additional findings and reasoning set forth in the Advisory
Action mailed October 8, 2015 (p. 2), and (3) the reasons set forth by the
Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief
(see Ans. 2—7). We concur with the conclusions reached by the Examiner.
Reason to Combine
The Examiner has provided a factual basis and articulated reasoning
with a rational underpinning to support the conclusion of obviousness with
regard to claim 16 (see Final Act. 3—7; Advisory Act. 2; Ans. 2—7). See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We agree with the
Examiner (Final Act. 6—7; Ans. 4—7) that Bourne and Gupta are both in the
field of clients accessing network services provided by servers (see Ans. 4)
and, therefore, it would have been obvious to modify Bourne’s digital rights
management method with Gupta’s method of ensuring client requests are
legitimate requests, and not from any unauthorized source. Accordingly, we
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Application 14/130,084
disagree with Appellant’s assertions (App. Br. 7—38) that there is no proper
reason to combine Bourne and Gupta.
Teaching Away
Appellant’s arguments (App. Br. 11—15 as to claim 16; App. Br. 27—
35, as to claim 21) that Gupta teaches away from encryption of a key are
unpersuasive. “A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Gurley,
27 F.3d 551, 553 (Fed. Cir. 1994).
As Appellant admits (see App. Br. 11, 19, 28, 34), Gupta discloses an
alternative to encryption (Gupta 13), thus expressing a mere preference for
non-encrypted instances; not a criticism of key encryption that discourages
investigation into its use. See DePuy Spine, Inc. v. Medtronic Sofamor
Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not
teach away ... if it merely expresses a general preference for an alternative
invention but does not ‘criticize, discredit, or otherwise discourage’
investigation into the invention claimed.”). That two references may
primarily address different types of designs (in this case, encrypted and non-
encrypted instances) does not necessarily discourage the path that was taken
by Appellant (in this case, encryption) or teach away. See Nat 7 Steel Car,
Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004) (“A
finding that two inventions were designed to resolve different problems . . .
is insufficient to demonstrate that one invention teaches away from
another.”); In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a prior-art
reference that discloses alternatives does not, simply by preferring some
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Application 14/130,084
alternatives, “teach away” from the non-preferred alternatives); see also
Syntex (U.S.A.) LLCv. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (a
particular reference’s mere silence about a particular feature does not tend to
teach away from it, especially if it is disclosed elsewhere in the prior art); In
re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); Para-Ordinance Mfg., Inc. v.
SGSImporters Inti., Inc., 73 F.3d 1085, 1090 (Fed. Cir. 1995).
We agree with the Examiner (Final Act. 4—7; Ans. 2—7) that the
obviousness rejection of claims 16—30 is proper because it would have been
obvious to modify Bourne’s encrypted content and services method using
DRM technology with Gupta’s secret authentication key because both
references (i) involve the use of multiple keys, and (ii) address/concem
client access to network services provided by servers (Ans. 4). Appellant’s
contentions (App. Br. 11—15 and 17—25) that Gupta teaches away from
making such a modification are unconvincing.
Hindsight
Appellant contends (App. Br. 20 as to claim 16; App. Br. 35 as to
claim 21) the Examiner’s obviousness determination is hinged upon
impermissible hindsight and is thus conclusory. To support their
conclusions of hindsight, Appellant presents conclusory statements that the
combination of Bourne and Gupta would require more than ordinary skill in
the art (App. Br. 9-10). Appellant’s conclusory statements are unsupported
by factual evidence. In addition, arguments of counsel cannot take the place
of factually supported objective evidence. See, e.g., In re Pearson, 494 F.2d
1399, 1405 (CCPA 1974); Icon Health & Fitness, Inc. v. Srava, 2017 WL
744548 *5 (Fed. Cir. Feb. 27, 2017). Also, while not required to, Appellant
has not submitted evidence of secondary considerations. Evidence of
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Application 14/130,084
secondary considerations “may also serve a guard against slipping into use
of hindsight.” Kahn, 441 F.3d at 986 (Fed. Cir. 2006) (quoting Graham v
John Deere Co., 383 U.S. 1, 36 (1966)). Therefore, we accord very little
probative value to Appellant’s conclusory statements that combining the
teachings of Bourne and Gupta required more than ordinary skill in the art.
In view of the foregoing, Appellant’s contentions (App. Br. 9-12;
Reply Br. 3 4) that it would not have been obvious to combine Bourne and
Gupta because the Examiner’s reasoning is conclusory and involves
hindsight are unconvincing.
Claims 19, 20, and 22 Separately Argued
With regard to claims 19, 20, and 22, Appellant contends (App. Br. 22
as to claims 19 and 20; App. Br. 37 as to claim 22) that Bourne “does not
appear to suggest securing the client application 302 with digital right
management technology” and paragraph 67 of Bourne describes a word
processing program example that “appears to not be secured with digital
rights management technology.” We agree with the Examiner (Final Act. 7—
8 as to claims 19 and 20; Final Act. 11—12 as to claim 22) that Bourne in
view of Gupta teach or suggest the subject matter recited in claims 19, 20,
and 22 because Bourne flflf 6, 13, 67, 69) discloses securing digital content
in a content file using digital rights management technology. Specifically,
Bourne discloses using DRM technology to protect content that “may be a
song, an album of songs, a movie, etc.” distributed to users in exchange for a
license fee (1 6); and “issuing usage licenses for digital content and services”
(113)(emphasis added). Bourne also discloses a content preparation
application 302 that (i) “can be a word processor or other publisher that
produces digital text files, digital music, video, or other such content” or can
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Application 14/130,084
include “streamed content” (| 67); (ii) rights management of the
content/service “can include the right to read, edit, copy, print, etc. the
digital content” or that “the user can edit the content” (| 67); and (iii)
produces rights managed content 310 that can be sent to a user/licensee (1
69). In this light, we find Bourne teaches or suggests securing a client
application with digital rights management technology as claimed.
CONCLUSION
The combination of Bourne and Gupta teaches or suggests a method
of distributing client applications to user devices using digital right
management (DRM) technology and a secret authentication key for
requesting a remote server application, as set forth in claim 16. Appellant
has not sufficiently shown that the Examiner erred in rejecting claim 16, as
well as remaining independent claims 21, 23, 27, 29, and 30, or their
respective dependent claims 17—20, 22, 24—26, and 28 under
35 U.S.C. § 103(a). Thus, we sustain the rejection before us.
DECISION
The Examiner’s rejection of claims 16—30 under 35 U.S.C. § 103(a) 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)(l)(iv).
AFFIRMED
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