`
`UNITED S'l‘A'l‘b‘S PATENT AND TRADEMARK OFFICE
`
`I.‘-NITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Addrusas: COMMISSIONER FOR 1’A’l'liN'l'S
`P.(). Ihrx I450
`Alexmldria. Virginia 22.“ 3- IJSO
`wu-u-.l1splo.gor
`
`APPLICA'FION N0.
`FILING DA'I'I‘L
`FIRST NAMED INVILN'I'OR
`A'l'i‘ORNIiY DOCKET NO.
`(TONFIRMA'I'ION N0.
`
`lonozzu
`oo'losrzool
`Kin Wang
`] 11325-230300
`moo
`
`22204
`
`T59U
`
`I'lfléfltm‘)
`
`NIXON PEABODY, UP
`401 9TH STREET, NW
`Sl ”'11:: 900
`WASHING’I‘ON, DC 20004-2128
`
`_
`_
`..
`]'.X.J\MIE\;ILR
`
`AUGUSTINEVENSJ
`\R'l' l‘VI'l'
`PAP] 'R Vl‘V‘IBl'R
`
`362|
`
`
`
`lznorzoot)
`
`PAPER
`
`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.
`
`PTOL—90A {Rt-v. 04m?)
`
`Petitioner Apple Inc. - Exhibit 1061, Cover
`
`Petitioner Apple Inc. - Exhibit 1061, Cover
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE BOARD OF PATENT APPEALS
`
`AND INTERFERENCES
`
`Ex pane XIN WANG and BIJAN TADAYON
`
`Appeal 2009—008480
`Application 10/162,212
`Technology Center 3600
`
`Decided: December 16, 2009
`
`Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
`
`JOSEPH A. FISCHETTI, Adminisrmrive 1945116311.!f Judges.
`
`LORIN, Administrarive Patel-z! Judge.
`
`DECISION ON APPEAL
`
`Petitioner Apple Inc. - Exhibit 1061, p. 1
`
`Petitioner Apple Inc. - Exhibit 1061, p. 1
`
`
`
`Appeal 2009-008480
`Application 10/162,212
`
`STATEMENT OF THE CASE
`
`Xin Wang and Bijan Tadayon (Appellants) seek our review under 35
`
`U.S.C. § 134 of the final rejection of claims 1- 19 and 29-40. We have
`
`jurisdiction under 35 U.S.C. § 6(b) (2002).
`
`SUMMARY OF DECISION
`
`We REVERSE.l
`
`THE INVENTION
`
`The invention “relates to a method and system for digital rights
`
`management and, more particularly, to a method and system for
`
`automatically offering and granting rights over a communications network
`
`or other channels.” Specification [0003].
`
`Claim 1, reproduced below, is illustrative of the subject matter on
`
`appeal.
`
`1. A method for transferring usage rights adapted to be associated
`with items within a digital rights management system, said method
`comprising:
`generating, by a supplier, at least one first offer including usage
`rights and meta—rights for the items, said usage rights defining a
`manner of use for the items, said meta-rights specifying rights to
`derive usage rights or other meta-rights for the items;
`presenting, by the supplier, said offer to a first consumer in said
`
`system,
`
`1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
`filed Jul. 7, 2006) and the Examiner’s Answer (“Answer,” mailed Feb. 13,
`
`2007).
`
`Petitioner Apple Inc. - Exhibit 1061, p. 2
`
`Petitioner Apple Inc. - Exhibit 1061, p. 2
`
`
`
`Appeal 2009-008480
`Application 10/162,212
`
`wherein the offer expresses what rights the consumer can
`acquire for the items;
`receiving, by the supplier, a selection from the first consumer
`indicating desired usage rights and meta-rights; and
`generating, by the supplier, a first license granting to the first
`consumer the usage rights and meta-rights for the items,
`wherein the first license grants the usage rights and meta-rights
`that are selected by the first consumer during the receiving step.
`
`THE RE] ECTION S
`
`The Examiner relies upon the following as evidence of
`
`unpatentability:
`
`Downs
`
`Hitson
`
`US 6,226,618 Bl
`
`May 1, 2001
`
`US 2002/0010759 A1
`
`Jan. 24, 2002
`
`The following rejections are before us for review:
`
`1. Claims 1-13, 15-18, and 29—40 are rejected under 35 U.S.C. §102(b)
`
`as being anticipated by Downs.
`
`2. Claim 14 is rejected under 35 U.S.C. §103(a) as being unpatentable
`
`over Downs.
`
`3. Claim 19 is rejected under 35 U.S.C. §103(a) as being unpatentable
`
`over Downs and Hitson.
`
`The issue is whether Downs describes, expressly or inherently, “meta-
`
`ISSUE
`
`rights” as claimed.
`
`FINDINGS OF FACT
`
`We find that the following enumerated findings of fact (FF) are
`
`supported by at least a preponderance of the evidence. Ethicon, Inc. v.
`
`3
`
`Petitioner Apple Inc. - Exhibit 1061, p. 3
`
`Petitioner Apple Inc. - Exhibit 1061, p. 3
`
`
`
`Appeal 2009-008480
`Application 10/162,212
`
`Qnigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
`
`evidentiary standard for proceedings before the Office).
`
`1. All the claims call for “meta-rights.”
`
`2. The Specification provides an express definition for “meta-rights”:
`
`Rights can specify transfer rights, such as distribution
`rights, and can permit granting of rights to others or the
`derivation of rights. Such rights are referred to as "meta—
`rights". Meta-rights are the rights that one has to
`manipulate, modify, or otherwise derive other meta-
`rights or usage rights. Meta-rights can be thought of as
`usage rights to usage rights. Meta-rights can include
`rights to offer, grant, obtain, transfer, delegate, track,
`surrender, exchange, and revoke usage rights to/from
`others. Meta—rights can include the rights to modify any
`of the conditions associated with other rights. For
`example, a meta—right may be the right to extend or
`reduce the scope of a particular right. A meta-right may
`also be the right to extend or reduce the validation period
`of a right.
`
`Specification [0030] (p. 9).
`
`3. The Examiner defines “meta-rights” to mean “Sub-rights, or
`
`additional usage conditions derived from the usage rights.” Answer 8.
`
`4. According to the Examiner, Downs describes “meta-rights” at col. 9,
`
`lines 33-35 and col. 10,11. 15-18. Answer 3.
`
`5. Col. 9, 11. 33—35, of Downs discloses: “The Metadata Assimilation and
`
`Entry Tool 161 is also used to enter the Usage Conditions for the
`
`Content 113. The data in Usage Conditions can include copy
`
`restriction rules, the wholesale price, and any business rules deemed
`
`necessary.”
`
`6. Col. 10, 1]. 15-18, of Downs discloses: “The secondary usage
`
`conditions data can include retail business offers such as Content 113
`
`Petitioner Apple Inc. - Exhibit 1061, p. 4
`
`Petitioner Apple Inc. - Exhibit 1061, p. 4
`
`
`
`Appeal 2009-008480
`Application 10/ 162,212
`
`purchase price, pay—per-listen price, copy authorization and target
`
`device types, or timed-availability restrictions.”
`
`PRINCIPLES OF LAW
`
`Claim Construction
`
`During examination of a patent application, a pending claim is given
`
`the broadest reasonable construction consistent with the specification and
`
`should be read in light of the specification as it would be interpreted by one
`
`of ordinary skill in the art. In re Am. Acad. QfSci. Tech Ctr., 367 F.3d 1359,
`
`1369 (Fed. Cir. 2004).
`
`Anticipation
`
`“A claim is anticipated only if each and every element as set forth in
`
`the claim is found, either expressly or inherently described, in a single prior
`
`art reference.” Verdegaal Bros" Inc. 12. Union Oil Co. ofCaL, 814 F.2d 628,
`
`631 (Fed. Cir. 1987).
`
`ANALYSIS
`
`The rejection of claims 1-13, 15-18, and 29-40 under 35 U.S.C. §102(b) as
`being anticipated by Downs.
`
`It was proper that the Examiner first attempted to construe the claims
`
`before reaching a determination as to whether Downs anticipated the
`
`claimed subject matter. Cf. In re Crislt, 393 F.3d 1253, 1256 (Fed. Cir.
`
`2004): “A determination that a claim is anticipated, under 35 U.S.C.
`
`§ 102(b) involves two analytical steps. First, the Board must interpret the
`
`claim language, where necessary. Because the PTO is entitled to give
`
`claims their broadest reasonable interpretation, our review of the Board's
`
`claim construction is limited to determining whether it was reasonable. In re
`
`5
`
`Petitioner Apple Inc. - Exhibit 1061, p. 5
`
`Petitioner Apple Inc. - Exhibit 1061, p. 5
`
`
`
`Appeal 2009-008480
`Application 10/ 162,212
`
`Morris, 127 F.3d 1048, 1055 (Fed. Cir. 1997). Secondly, the Board must
`
`compare the construed claim to a prior art reference and make factual
`
`findings that “each and every limitation is found either expressly or
`
`inherently in [that] single prior art reference.” Celerilas Techs. Ltd. v.
`
`Rockwell lm'l Corp, 150 F.3d 1354, 1360 (Fed. Cir. 1998).” FF 3.
`
`However, “claims are to be read in the light [of the specification], not
`
`in a vacuum.” In re Dean, 291 F.2d 947, 951 (CCPA 1961). The written
`
`description is “always highly relevant” in construing a claim, and “the
`
`speicification
`
`is the single best guide to the meaning of a disputed term.”
`
`Virronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
`
`Here the Specification provides an express definition of “meta-rights”.
`
`FF 2. The definition for “meta-rights” given in the Specification governs the
`
`construction to be given that term in the claims.
`
`[O]ur cases recognize that the specification may reveal a
`special definition given to a claim term by the patentee
`that differs from the meaning it would otherwise possess.
`In such cases, the inventor‘s lexicography governs. See
`CCS Fitness, Inc. 12. Brunswick Corp., 288 F.3d 1359,
`1366 (Fed. Cir. 2002).
`In other cases, the specification
`may reveal an intentional disclaimer, or disavowal, of
`claim scope by the inventor. In that instance as well, the
`inventor has dictated the correct claim scope, and the
`inventor‘s intention, as expressed in the specification, is
`regarded as dispositive. See SciMed Life Sys, Inc. v.
`Advanced Cardiovascular Slvs., Inc., 242 F.3d 1337,
`1343-44 (Fed. Cir. 2001).
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
`
`The Examiner did not rely on the definition for “meta—rights”
`
`expressly provided in the Specification but construed the term in a manner
`
`that would cover information about conditions set forth in “metadata” like
`
`Petitioner Apple Inc. - Exhibit 1061, p. 6
`
`Petitioner Apple Inc. - Exhibit 1061, p. 6
`
`
`
`Appeal 2009-008480
`Application 10/ 162,212
`
`those described in Downs. FF 5 - 6. However, information about conditions
`
`set forth in “metadata” is not the same as “meta-rights” as the Appellants
`
`have defined them - which are “the rights that one has to manipulate,
`
`modify, or otherwise derive other meta—rights or usage rights.” FF 2. We do
`
`not find the information about conditions set forth in “metadata” that Downs
`
`discloses to be the same as the “meta-rights” as claimed. Accordingly, we
`
`find that a prima facie case of anticipation of the claimed subject matter over
`
`Downs has not been established.
`
`The rejecrion of claim 14 under 35 US. C. §103(a) as being unparemable
`over Downs.
`
`and
`
`The rejection ofclaim 19 under 35 US. C. §103(a) as being imparentable
`over Downs and Hirsorz.
`
`Claims 14 and 19 depend on claim 15 whose rejection under § 102 is
`
`reversed. See supra. The rationale in support of the rejections of these
`
`claims relies on a construction of the claim term “meta-rights” which is
`
`inconsistent with the definition of that term as expressly provided for in the
`
`Specification. Answer 6-7. See FF 2. Since the claims have not been given
`
`the broadest reasonable construction in light in‘he Specification, a prima
`
`facie case of obviousness of the claimed subject matter has not been
`
`established.
`
`CONCLUSIONS
`
`We conclude that the Appellants have shown that the Examiner erred
`
`in rejecting claims l-13, 15-18, and 29-40 under 35 U.S.C. §102(b) as being
`
`anticipated by Downs; claim 14 under 35 U.S.C. §103(a) as being
`
`Petitioner Apple Inc. - Exhibit 1061, p. 7
`
`Petitioner Apple Inc. - Exhibit 1061, p. 7
`
`
`
`Appeal 2009-008480
`Application 10/ 162,212
`
`unpatentable over Downs; and, claim 19 is rejected under 35 U.S.C. §103(a)
`
`as being unpatentable over Downs and Hitson.
`
`DECISION
`
`The decision of the Examiner to reject claims 1-19 and 29-40 is
`
`reversed.
`
`REVERSED
`
`mev
`
`NIXON PEABODY, LLP
`
`401 9TH STREET, NW
`
`SUITE 900
`
`WASHINGTON DC 20004-2128
`
`Petitioner Apple Inc. - Exhibit 1061, p. 8
`
`Petitioner Apple Inc. - Exhibit 1061, p. 8
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
