Ex Parte Stefik et alDownload PDFPatent Trial and Appeal BoardMay 15, 201713600907 (P.T.A.B. May. 15, 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. 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 2 Appeal 2015-000526 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 3 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. 4 Appeal 2015-000526 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. 5 Appeal 2015-000526 Application 13/600,907 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 6 Appeal 2015-000526 Application 13/600,907 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. 7 Appeal 2015-000526 Application 13/600,907 DECISION The rejection of claims 1—30 is reversed. REVERSED 8 Copy with citationCopy as parenthetical citation