Ex Parte Soukup et al

Patent Trial and Appeal Board

Sep 20, 2012

11615754 (P.T.A.B. Sep. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte MARTIN JAN SOUKUP, 7
ANOOP NANNRA, 8
and MARTIN MEIER 9
___________ 10
11
Appeal 2011-002369 12
Application 11/615,754 13
Technology Center 3600 14
___________ 15
16
17
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 18
BIBHU R. MOHANTY, Administrative Patent Judges. 19
FETTING, Administrative Patent Judge. 20
DECISION ON APPEAL 21
Appeal 2011-002369
Application 11/615,754

2
STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed May 11, 2010) and the Examiner’s Answer (“Ans.,” mailed
August 4, 2010).
Martin Jan Soukup, Anoop Nannra, and Martin Meier (Appellants) seek 2
review under 35 U.S.C. § 134 (2002) of a final rejection of claims 1-23, the 3
only claims pending in the application on appeal. We have jurisdiction over 4
the appeal pursuant to 35 U.S.C. § 6(b) (2002). 5
The Appellants invented a rights management technique that allows user 6
terminals to share usage rights that are necessary for accessing associated 7
media content, while ensuring that the media content is not accessed in 8
violation of the usage rights (Specification ¶ 0004). 9
An understanding of the invention can be derived from a reading of 10
exemplary claim 1, which is reproduced below [bracketed matter and some 11
paragraphing added]. 12
1. A method for operating a first user terminal comprising: 13
[1] receiving 14
media content 15
and 16
usage rights 17
that control access to the media content; 18
[2] storing the media content and the usage rights at the first 19
user terminal; 20
[3] receiving a first request from a second user terminal; 21
and 22
Appeal 2011-002369
Application 11/615,754

3
[4] in response to the first request, 1
sending 2
from the first user terminal 3
at least a first portion of the usage rights to the 4
second user terminal, 5
wherein the second user terminal 6
is able to use the at least a first portion of the 7
usage rights 8
to access the media content. 9
The Examiner relies upon the following prior art: 10
Hurtado US 6,983,371 B1 Jan. 3, 2006
Chang EP 1,646,204 A1 Apr. 12, 2006
Claims 1-23 stand rejected under 35 U.S.C. § 103(a) as unpatentable 11
over Hurtado and Chang.2 12
ISSUES 13
The issues of obviousness turn primarily on whether Hurtado shows 14
storing the rights and content on the same system and whether Chang 15
transfers rights at the request of the receiving party. 16

2 The Examiner withdrew a rejection under 35 U.S.C. § 101. Ans. 3.
Appeal 2011-002369
Application 11/615,754

4
FACTS PERTINENT TO THE ISSUES 1
The following enumerated Findings of Fact (FF) are believed to be 2
supported by a preponderance of the evidence. 3
Facts Related to the Prior Art 4
Hurtado 5
01. Hurtado is directed to delivering encrypted digital content from 6
a first system for playing the content to a second system for 7
playing the content. Hurtado 6:25-28. 8
02. Licensing authorization and control are implemented through 9
the use of a Clearinghouse(s) entity and Secure Container (SC) 10
technology. The Clearinghouse(s) provides licensing 11
authorization by enabling intermediate or End-User(s) to unlock 12
content after verification of a successful completion of a licensing 13
transaction. Secure Containers are used to distribute encrypted 14
content and information among the system components. A SC is a 15
cryptographic carrier of information or content that uses 16
encryption, digital signatures, and digital certificates to provide 17
protection against unauthorized interception or modification of 18
electronic information and content. Hurtado 10:62 – 11:7. 19
03. Hurtado describes its Secure Digital Content Electronic 20
Distribution System Flow. Hurtado 20:37 – 23:16. In steps 138-21
139, the Usage Conditions are included in the Transaction SC. 22
The transaction SC is then transmitted to the End-User Device. 23
Appeal 2011-002369
Application 11/615,754

5
Chang 1
04. Chang is directed to delivering all or part of a rights object 2
(RO) to users. Chang ¶ 0001. 3
05. Chang explicitly describes receiving a request from a second 4
user terminal and in the response to the request, sending a license 5
from the first user terminal to the second user terminal. In ¶’s 6
0007-0008, upon request of the assignee, the assignee is 7
authenticated and a license is decrypted and transferred to the 8
assignee. In particular, ¶ 0008 states “[t]he proposed approach 9
makes it possible for a user holding a license to execute content to 10
transfer the license to another user.” ¶ 0007 step 3 delivers an 11
encryption key, but not the encrypted content license, prior to a 12
request. The content license is transferred upon assignee request 13
in step 4. 14
ANALYSIS 15
Initially, we find that the Examiner responded to all of Appellants’ 16
Appeal Brief arguments fully and with factual findings we have verified. 17
Those findings support the Examiner’s reasoning for the rejections. 18
Accordingly, we adopt the Examiner’s findings of fact and analysis from 19
Answer 4-13, and we reach similar legal conclusions. 20
In particular, we are not persuaded by the Appellants’ argument that 21
Digital Content and the Usage Conditions of Hurtado are not both stored on 22
a first user terminal. Appellants do not argue storage of the content, as that 23
is required for play. As to the Usage Conditions, Hurtado explicitly stores 24
that as well. FF 03. We are similarly not persuaded by the Appellants’ 25
Appeal 2011-002369
Application 11/615,754

6
argument regarding the request and sending of rights in steps [3] and [4]. 1
Appellants argue that the rights are transferred prior to the second party 2
request. It is only an encryption key that is transferred at that point, the 3
license is transferred upon request by the assignee, who is the second party. 4
FF 05. 5
CONCLUSIONS OF LAW 6
The rejection of claims 1-23 under 35 U.S.C. § 103(a) as unpatentable 7
over Hurtado and Chang is proper. 8
DECISION 9
The rejection of claims 1-23 is affirmed. 10
No time period for taking any subsequent action in connection with this 11
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 12
§ 1.136(a)(1)(iv) (2007). 13
14
AFFIRMED 15
16
17
18
19
20
21
22
mls 23