Ex Parte Stefik et al

Patent Trial and Appeal Board

May 15, 2017

13600907 (P.T.A.B. May. 15, 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.
13/600,907 08/31/2012 Mark J. Stefik 10-510-US-C67 1006
98804 7590
Reed Smith LLP
P.O. Box 488
Pittsburgh, PA 15230
05/17/2017 EXAMINER
MCINTYRE, CHARLES AARON
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
05/17/2017 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):
ptoipinbox @reedsmith.com
gdonovan @reedsmith. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK J. STEFIK and PETER L. T. PIROLLI
Appeal 2015-000526
Application 13/600,907
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
MICHAEL W. KIM, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Mark J. Stefik and Peter L. T. Pirolli (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1—30, the only claims pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants’ Appeal Brief (“App
Br.,” filed April 21, 2014) and Reply Brief (“Reply Br.,” filed October 7,
2014), and the Examiner’s Answer (“Ans.,” mailed August 7, 2014), and
Final Action (“Final Act.,” mailed August 21, 2013).
Appeal 2015-000526
Application 13/600,907
The Appellants invented a form of distribution and usage rights
enforcement for digitally encoded works. Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. An apparatus for permitting use of content, the apparatus
comprising:
one or more processors;
and
one or more memories operatively coupled to at least one of the
one or more processors and having instructions stored thereon
that, when executed by at least one of the one or more
processors, cause at least one of the one or more processors to:
[1] associate a transfer right with content,
the transfer right specifying that the content is permitted
to be transferred from a first computing device to a
second computing device,
the first computing device including at least a server
mode of operation,
the server mode of operation being configured for
processing a transfer request message received from the
second computing device,
the second computing device including both a requester
mode of operation and a server mode of operation,
the requester mode of operation being configured for
sending a transfer request message to the first computing
device specifying content
and
the server mode of operation being configured for
processing a request message for utilizing the content in
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Application 13/600,907
accordance with at least one usage right associated with
the content;
enable the transfer of the content from the first computing
device to the second computing device in accordance with the
transfer right;
update information associated with the transfer right based on
the transfer of the content from the first computing device to the
second computing device;
associate a usage right with the content, the usage right
corresponding to a utilization of the content.
The Examiner relies upon the following prior art:
Claims 1—30 stand rejected under 35 U.S.C. § 112, second paragraph, as
failing to particularly point out and distinctly claim the invention.
Claims 1—30 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Wyman and Kahn.
The issues of obviousness turn primarily on whether the art describes the
limitations “associate a transfer right with content” and “enable the transfer
of the content from the first computing device to the second computing
device in accordance with the transfer right.”
and
Wyman US 5,260,999
Kahn US 6,135,646
Nov. 9, 1993
Oct. 24, 2000
ISSUES
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Appeal 2015-000526
Application 13/600,907
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Wyman
01. Wyman is directed to managing the licensing of software
executed on computer systems. Wyman 1:24—26.
02. A license management system is used to account for software
product usage in a computer system. Wyman establishes a
management policy having a variety of simultaneously-available
alternative styles and contexts. A license server administers the
license, and each licensed product upon start-up makes a call to
the license server to check on whether usage is permitted. The
license server maintains a store of the licenses, called product use
authorizations, that it administers. Upon receiving a call from a
user, the license server checks the product use authorization to
determine if the particular use requested is permitted, and, if so,
returns a grant to the requesting user node. The license server
maintains a database of product use authorizations for the licensed
products, and accesses this database for updating and when a
request is received from a user. In a distributed system, a license
server executes on a server node and the products for which
licenses are administered are on client nodes. Wyman 6:43—67.
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Application 13/600,907
03. The product use authorization is structured to define a license
management policy allowing a variety of license alternatives by
components called “style,” “context,” “duration,” and “usage
requirements determination method.” The style may be allocative
or consumptive. An allocative style means the units of the license
may be allocated temporarily to a user when a request is received,
then returned to the pool when the user is finished, so the units
may be reused when another user makes a request. A
consumptive style means the units are deducted from an available
pool when a user node makes a valid request, and “consumed,”
not to be returned for reuse. Wyman 7:3—15.
Kahn
04. Kahn is directed to managing digital objects in a network, the
objects are stored at locations accessible in the network using a
storage technique which renders the digital objects secure against
unauthorized access. Pointer information which associates each
digital object identifier with a pointer indicating the location of the
stored digital object is also stored in the network. For each digital
object validation information is stored, separately from the digital
object, and is sufficient to permit a determination whether a
purported instance of a digital object is identical to the original.
An authorized user may have access to the validation information,
using the digital object identifier, to determine whether a
purported instance of a digital object is identical to the original.
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The validation information comprises a digital signature over the
digital obj ect. Kahn 2:18—3 2.
ANALYSIS
Claims 1—30 rejected under 35 U.S.C. § 112, second paragraph, as failing
to particularly point out and distinctly claim the invention
We are persuaded by Appellants' argument that the scope of the claims is
definite. App. Br. 9—11. The Examiner finds that the method and article of
manufacture claims recite using an apparatus. Final Act. 7—8. This in itself
does not turn the claims into hybrid claims.
Claims 1—30 rejected under 35 U.S.C. § 103(a) as
unpatentable over Wyman and Kahn
We are persuaded by Appellants’ argument that
The recited “transfer right” is first mapped to an allocative
license, but as explained above, the allocative license is does
not specify that content is permitted to be transferred. As
emphasized earlier, the content (licensed program) in Wyman is
already on the user CPU, and the allocative license simply
allows the user CPU to execute the program. The allocative
license does not relate to transferring the content (the licensed
program).
App. Br. 20. The Examiner replies that the breadth of the words “associate”
and “enable” allow the art to fit within the scope of the claim. Ans. 9. The
Examiner refers to the limitations “associate a transfer right with content”
and “enable the transfer of the content from the first computing device to
the second computing device in accordance with the transfer right.” Id. at
8-9.
Were the art to actually refer to such a transfer, we would agree. This
gets to the most pertinent problem the Examiner has in mapping Wyman’s
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allocation to the recited transfer. Id. Wyman allocates licenses rather than
transferring content. The issue is whether a license allocation is a content
transfer. The easy answer is no. The whole point of Wyman is to allow the
content to remain static and rely on a license server to allocate a license as
needed.
To the extent the Examiner is saying that because Wyman’s content is
data amenable to transfer, anything “enables” the transfer that the operating
system is capable of performing, the word “enable” is not so broad that it has
no causative attribute. Nothing in Wyman suggests that it is an allocated
license that enables a content transfer, or that a lack of such allocation
disables such a transfer. Wyman uses the word “transfer” only once, and
that as regarding transfer of a license rather than content.
To the extent the Examiner relies on Kahn’s content transfer to make up
for this deficiency, although Kahn describes transferring content several
times, none of those descriptions are in the context of rights for such a
transfer. Kahn only describes moving physically unencumbered content that
then has to rely on an entirely different rights system to render the content.
CONCLUSIONS OF LAW
The rejection of claims 1—30 under 35 U.S.C. § 112, second paragraph,
as failing to particularly point out and distinctly claim the invention is
improper.
The rejection of claims 1—30 under 35 U.S.C. § 103(a) as unpatentable
over Wyman and Kahn is improper.
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DECISION
The rejection of claims 1—30 is reversed.
REVERSED
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