Ex Parte RantalaDownload PDFPatent Trial and Appeal BoardMar 8, 201714130084 (P.T.A.B. Mar. 8, 2017) Copy Citation 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 2 Appeal 2019-008123 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. 3 Appeal 2019-008123 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 4 Appeal 2019-008123 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 5 Appeal 2019-008123 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 6 Appeal 2019-008123 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 7 Appeal 2019-008123 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 8 Copy with citationCopy as parenthetical citation