UNITED STA TES p A TENT 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. 10/524,423 02/14/2005 Mats Naslund Pl7234-US1 6264 27045 7590 ERICSSON INC. 6300 LEGACY DRIVE MIS EVR 1-C-11 PLANO, TX 75024 06/01/2016 EXAMINER COPPOLA, JACOB C ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 06/01/2016 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): kara.coffman@ericsson.com kathryn.lopez@ericsson.com PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MATS NASLUND, GORAN SELANDER, and ULF VJORKENGREN Appeal2013-002326 1 Technology Center 3600 Before, JOSEPH A. FISCHETTI, JAMES A. WORTH, and BRUCE T. WIEDER, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. 134 of the Examiner's final rejection of claims 68-71. We have jurisdiction under 35 U.S.C. 6(b ). SUMMARY OF DECISION We AFFIRM. 1 Appellants identify Telefonaktiebolaget LM Ericsson as the real party in interest. Br. 1.
THE INVENTION Appellants claim a "digital rights management (DRM) for managing digital content provided over networks, and more particular to monitoring usage of digital content by a client in a DRM system." Specification 1. Claim 68 reproduced below, is representative of the subject matter on appeal. 68. A client system that uses digital content provided by a content provider over a network, said content-using client system comprising: a receiving agent that receives certain digital content from said content provider, wherein the receiving agent is implemented in hardware or a combination of hardware-software; a rendering device that renders said received digital content, wherein the rendering device is implemented in hardware or a combination of hardware-software; a logging agent that monitors usage information concerning the actual rendering of said digital content by said rendering device, wherein the logging agent is implemented in hardware or a combination of hardwaresoftware; and an authenticator that performs a security operation to cryptographically link said usage information with a particular user account or identity, wherein the authenticator is implemented in hardware or a combination of hardware-software. 2
THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Kobata Gruse US 2002/0077986 Al US 6,389,538 Bl Jun.20,2002 May 14, 2002 The following rejections are before us for review. Claims 68-71 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter. Claims 68-71 are rejected under 35 U.S.C. 103(a) as being unpatentable over Gruse in view ofkobata. FINDINGS OF FACT 1. We adopt the Examiner's findings as set forth on pages 19-20 of the Answer directed to the 35 U.S.C. 103(a) rejection only. 2. Specification describes an authenticator in various types of embodiments as follows: The security operation of the invention for enabling identification of the client by linking the logged usage information thereto can be performed in a number of different ways. Firstly, as was mentioned above, at least part of an authentication of the usage information can be performed by the client. This authentication could be a signing of the usage information using a private signing key of an asymmetric key pair, where the associated public verification key together with a certificate on the 3
public key is certified by a trusted party, e.g. the network operator. Alternatively, an authentication tag based on symmetric keys can be appended to the logged usage information, allowing identification from whom the information is derived by involving a trusted third party knowing the symmetric key. The origin of the usage information could also, at least implicitly, be identified by encrypting or cryptographically protecting the usage information with a protected key. Alternatively, the client could send the generated usage information to a trusted third party, which performs the actual security operation. Another possible security operation is to store the logged usage information in an environment that is inaccessibly [sic] for the user, but associated thereto or to the client system. A typical example is the environment of a subscriber identity module (SIM). For activating the SIM environment the user typically enters a pin code or personal security code. Specification 4: 11-28 3. The Examiner found that Kobata discloses the claimed authenticator: Kobata teaches an authenticator (computer device 310 of fig. 3) that performs a security operation to cryptographically link said usage information with a particular user account or identity ([0158]: usage information is stored in database 412 when content is manipulated by, e.g., device 310; [0145]: database 412 is decrypted by user's public key, therefore necessarily encrypted by user's private key, which creates a cryptographic link between the usage info and the user), wherein the authenticator is implemented in hardware of a combination of hardware-software (see description of310). 4
(Final Act. 9). 4. Kobata discloses Para. 143. Next, the personal rights manager module 414 may, for example, be required to communicate with the global rights manager unit 312 via the communication pathway 314 in order to verify that the particular end-user is authorized to manipulate the particular digital content 320 on the particular computer device 310 (step 516). This authentication procedure also can be done locally, via the local digital rights database 412 or another digital rights database available via some other storage device accessible by the computer 310. 5. Kobata discloses Para. 144. The personal rights manager module 414 may further access the database of digital rights in order to determine what, if any, digital rights exist to manipulate the digital content 320 (steps 514 and 516). This procedure may entail simply locating the local digital rights database 412, decrypting the local digital rights database 412, and determining the digital rights available to manipulate the digital content 320. 6. Kobata discloses that encrypted digital rights can be stored locally on the computer 310. Para. 14 3. ANALYSIS 35 U.S.C. 112 SECOND REJECTION We will reverse the rejection of claims 68-71 under 35 U.S.C. 112 second paragraph. A claim limitation will be interpreted to invoke 35 U.S.C. 112, sixth 5
paragraph, if it meets the following 3-prong analysis: (A) the claim limitation uses the term "means" or "step" or a term used as a substitute for "means" that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function; (B) the term "means" or "step" or the generic placeholder is modified by functional language, typically, but not always linked by the transition word "for" (e.g., "means for") or another linking word or phrase, such as "configured to" or "so that"; and (C) the term "means" or "step" or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. M.P.E.P. 2181, 9th ed. (2015). Mechanism For Language "[T]he '254 patent's claim language does not include the word "means," but instead the similar word "mechanism." This court has had several prior occasions to consider the applicability of means-plus-function treatment in the context of the claim term "mechanism." In Massachusetts Institute Of Technology v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006) ("MIT"), this court considered the applicability of means-plus-function treatment to the term "colorant selection mechanism." This court noted that "[t]he generic terms 'mechanism,' 'means,' 'element,' and 'device,' typically do not connote sufficiently definite structure [to avoid means-plusfunction treatment]... The term 'mechanism' standing alone connotes no more structure than the term 'means."' Id. (emphasis added). Welker Bearing Co. v. PHD Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008). 6
Appellants argue that Applicant respectfully submits that claims 68-71 do not have claimed phrases which invoke 35 U.S.C 112, sixth paragraph. In this regard, the Examiner acknowledged the claimed limitations do not use the phrases "means for" or "step for" which is a strong indication that the claimed phrases do not invoke 35 U.S.C. 112, sixth paragraph. (Appeal Br. 4). We agree with Appellants. We find that claim terms "receiving agent", "rendering device" and "authenticator" are not generic terms for purposes of a 35 U.S.C. 112 sixth paragraph analysis. Generic terms do not connote sufficiently definite structure to avoid means-plus-function treatment. Welker, 1096. We find that these terms are not generic in that, for example, an authenticator has structure which, either by fixed code or by hard wiring, causes data to be authenticated. Thus, since we find the terms at issue to each connote more structure we than would the generic term "means", we do not construe the claims to invoke 35 U.S.C. 112 6th paragraph. For this reason, we will not sustain the rejection of claims 68-71 under 35 U.S.C. 112, 2nd paragraph. 35 U.S.C. 103 REJECTION The Appellants argue claims 68 and 69 as a group, claim 68 being the representative claim for this group (Appeal Br. 5), and the remaining dependent claim 69 standing or falling with claim 68. 37 C.F.R. 41.37(c)(l)(iv) (2012). Appellants argue In reading Kobata's paragraphs [109] and [154] it is clear that the content is being encrypted with the 7
purpose of preventing or controlling access. In particular, Kobata teaches that the digital content remains "secured" until it is determined that the user has the right to access the digital content However, Kobata does not teach where the user's usage/manipulation information of the accessed digital content is ever "secured" in the database 412. Hence, there is no hint to the presently claimed invention's "an authenticator performs a security operation to cryptographically link said usage information with a particular user account or identity" (emphasis and footnote omitted). (Appeal Br. 7). We disagree with Appellants. We begin by construing the scope of claim 68. Claim 68 uses functional language, i.e., "an authenticator that performs a security operation to cryptographically link said usage information with a particular user account or identity,... " As functional language, we are required to give this language weight only to the extent that the prior art is or is not capable of meeting the limitation. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). The authenticator is described by Appellants' Specification on "page 4, lines 1-2, page 4, lines 12-23, page 20, lines 1-2, FIGS. 2-5 and 7-9, items 160 and 162, and FIGS. 8-9, item 460." (Appeal Br. 2). According to the Specification on page 4, numerous devices can be used as the authenticator. (FF. 2). The Examiner found that the authenticator is disclosed by Kobata's computer device 310. (FF. 3). We find no error with the Examiner's finding here. Our review of Kobata reveals that Kobata does disclose an 8
authenticator at the personal rights manager module 414 which decrypts the local digital rights database 412, and determines the digital rights available to manipulate the digital content 320. (FF. 5). The encrypted digital rights can be stored locally on the computer 310. (FF. 6). Insofar as the personal rights manager module 414 decrypts the local digital rights database 412 and verifies that the particular end-user is authorized to manipulate the particular digital content 320 via local digital rights database 412 (FF. 4-6), we find that Kobata discloses cryptographically linking the usage information (content manipulation data 320) with a particular user account or identity (end user verification data). Appellants argue, "Applicant submits that the Examiner's interpretation of Kobata where he considers it to teach that an authentication procedure is required to authenticate the digital rights for every attempt to manipulate the digital content 320 does not hint to the need to authenticate the usage/manipulation information for every attempt to manipulate the digital content 320. (emphasis omitted)" (Appeal Br. 11) We disagree with Appellants because we find nothing in Kobata would prevent the personal rights manager module 414 from authenticating usage/manipulation information for every attempt to manipulate the digital content 320. At the very least, Kobata is capable of doing this. Also, "Applicant argues that the Examiner has not established a prima facie case of obviousness and that the Examiner's assumptions with respect to Kobata's teaching where usage information is encrypted and more specifically where the usage information is encrypted with the user's private key do not constitute the disclosure of prior art." (Appeal Br. 12) 9
In light of the breadth of the claim, the Appellants' argument is not persuasive as to error in the rejection. First, the claim does not require that usage information be encrypted as argued by Appellants. Instead, the claim only recites "cryptographically link[ing] said usage information with a particular user account or identity" which we find is met by Kobata disclosing that the rights manager module 414 decrypts the local digital rights database 412, and determines the digital rights available to the user. (FF. 4-6). Appellants further argue "an authenticator that performs a security operation to cryptographically link said usage information with a particular user account or identity" is concerned with providing a "cryptographical tracking" of the user's renderings/usages/manipulations of the digital content. Clearly, the Examiner should realize that this usage information is in general only available after such rendering/usage/manipulation of the digital content has occurred,... (emphasis omitted)" (Appeal Br. 13). We disagree with Appellants because nothing in the claims require "cryptographically tracking" nor does anything in claim 68 tie usage information to when or even how it is gathered. Appellants argue claims 7 0 and 71 based on the arguments advanced for claim 68 which we find unpersuasive, and thus find equally unpersuasive for claims 7 0 and 71. CONCLUSIONS OF LAW We conclude the Examiner did err in rejecting claims 68-71 under 35 U.S.C. 112. 10
We conclude the Examiner did not err in rejecting claims 68-71 under 35 U.S.C. 103. DECISION No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. 1.136(a). See 37 C.F.R. 1.136(a)(l )(iv). AFFIRMED. 11