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`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
`Alexandria1 Virginia 22313- 1450
`www.uspto.gov
`
`APPLICATION NO.
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`
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`F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`
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`CONF {MATION NO.
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`10/ 162,701
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`06/06/2002
`
`Xin Wang
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`111325—290100
`
`6475
`
`22204
`
`7590
`
`07/27/2010
`
`NIXON PEABODY, LLP
`401 9TH STREET, NW
`SUITE 900
`WASHINGTON, DC 20004-2128
`
`EXAMINER
`
`AUGUSTIN, EVENS J
`
`ART UNIT
`
`3621
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`MAIL DATE
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`07/27/2010
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`PAPER NUMBER
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`DELIVERY MODE
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
`
`PTOL—90A (Rev. 04/07)
`
`Petitioner Apple Inc. - EX. 1047, p. 1
`
`Petitioner Apple Inc. - Ex. 1047, p. 1
`
`

`

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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE BOARD OF PATENT APPEALS
`
`AND INTERFERENCES
`
`Ex parte XIN WANG,
`THANH TA,
`
`GUILLERMO LAO, and
`
`EDDIE J. CHEN
`
`Appeal 2009-011700
`Application 10/162,701
`Technology Center 3600
`
`Decided: July 27, 2010
`
`Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R.
`
`MOHANTY, Administrative Patent Judges.
`
`FETTING, Administrative Patent Judge.
`
`DECISION ON APPEAL1
`
`1 The two-month time period for filing an appeal or commencing a ciVil
`action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
`as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
`(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
`mode) shown on the PTOL-90A cover letter attached to this decision.
`
`Petitioner Apple Inc. - EX. 1047, p. 2
`
`Petitioner Apple Inc. - Ex. 1047, p. 2
`
`

`

`Appeal 2009-011700
`Application 10/162,701
`
`STATEMENT OF THE CASE
`
`Xin Wang, Thanh Ta, Guillermo Lao, and Eddie J. Chen (Appellants)
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`seek review under 35 U.S.C. § 134 (2002) of a final rejection of claims 1-18
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`and 28-29, the only claims pending in the application on appeal.
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`We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b)
`
`(2002).
`
`We AFFIRM.
`
`SUMMARY OF DECISION2
`
`THE INVENTION
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`The Appellants invented a method for transferring rights associated to
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`items from a rights supplier to a rights customer. Specification HI 0008.
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`An understanding of the invention can be derived from a reading of
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`exemplary claim 1, which is reproduced below [bracketed matter and some
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`paragraphing added].
`
`1. A method for transferring rights adapted to be associated
`with items from a rights supplier to a rights consumer, said
`method comprising:
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`obtaining a set of rights associated with an item, said set
`[1]
`of rights including a meta-right, wherein the meta-right is
`provided in digital form, is enforceable by a repository, and
`specifies a derivable right that can be derived from exercising
`
`2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
`Br.,” filed September 15, 2008) and the Examiner’s Answer (“Ans.,” mailed
`January 7, 2009), and Final Rejection (“Final Rej.,” mailed May 24, 2006).
`
`2
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`Petitioner Apple Inc. - EX. 1047, p. 3
`
`Petitioner Apple Inc. - Ex. 1047, p. 3
`
`

`

`Appeal 2009-011700
`Application 10/ 162,701
`
`the meta-right by the rights consumer, a condition that must be
`satisfied to exercise the meta-right, and a state variable related
`to the condition, said derivable right being another meta-right
`or a usage right, whereby the meta-right is distinct from any
`usage rights specifying how the item can be used and
`distributed;
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`determining by a repository whether the rights consumer
`[2]
`is entitled to exercise the meta-right to derive the derivable right
`specified by the meta-right; and
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`if the rights consumer is entitled to exercise the meta-
`[3]
`right to derive the derivable right specified by the meta-right,
`deriving the derivable right and generating a license including
`the derived right, said license being enforceable by a repository.
`
`THE REJECTIONS
`
`The Examiner relies upon the following prior art:
`
`Downs et al.
`
`US 6,226,618 B1 May 1, 2001
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`Claims 1-18 and 28-29 stand rejected under 35 U.S.C. § 102(b) as being
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`anticipated by Downs.
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`ISSUES
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`The issue of whether the Examiner erred in rejecting claims 1-18 and 28-
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`29 under 35 U.S.C. § 102(b) as being anticipated over Downs turns on
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`whether Downs describes meta-rights as required by the claimed invention.
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`FACTS PERTINENT TO THE ISSUES
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`The following enumerated Findings of Fact (FF) are believed to be
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`supported by a preponderance of the evidence.
`
`OLA-IKUJNH
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`\]
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`Petitioner Apple Inc. - Ex. 1047, p. 4
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`Petitioner Apple Inc. - Ex. 1047, p. 4
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`

`

`Appeal 2009-011700
`Application 10/162,701
`
`Facts Related to the Prior Art
`
`Downs
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`01. Downs is directed to a system and related tools for the secure
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`delivery and rights management of digital assets, such as print
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`media, films, games, and music over global communications
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`networks. Downs 1:52-57.
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`02.
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`Downs describes a digital content electronic distribution system
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`that has a rights management architecture which consists of layers
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`to protect the usage of content. Downs 19:40-45. A content usage
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`layer permits the specification and enforcement of the conditions
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`or restrictions imposed on the use of content at end user devices.
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`Downs 21:23-26. Conditions may specify the number of plays
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`allowed for the content, whether the creation of a secondary copy
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`is permitted, the number of secondary copies, or whether the
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`content can be copied to an external device. Downs 21:26-30.
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`The content provider sets the allowable usage conditions and
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`transmits them to the electronic store. Downs 21:30-33. The
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`electronic store can add to or narrow the usage conditions, as long
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`as the original conditions are not invalidated, and then transmit the
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`usage conditions to the end user device. Downs 21:33-39.
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`03.
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`The content provider creates metadata container and a content
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`container for every content distributed. Downs 23:37-39. The
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`metadata secure container includes metadata (such as artist name,
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`CD cover art, or other content dependant parts), usage conditions,
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`Petitioner Apple Inc. - EX. 1047, p. 5
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`Petitioner Apple Inc. - Ex. 1047, p. 5
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`

`

`Appeal 2009-011700
`Application 10/162,701
`
`templates, watermarking instructions, certificates, and digital
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`signatures. Downs 29:35-61 and 30:19-51.
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`Facts Related To The Level Of Skill In The Art
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`04. Neither the Examiner nor the Appellants have addressed the
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`level of ordinary skill in the pertinent art of digital rights
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`management systems. We will therefore consider the cited prior
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`art as representative of the level of ordinary skill in the art. See
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`Okajima v. Bonrdean, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
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`(“[T]he absence of specific findings on the level of skill in the art
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`does not give rise to reversible error ‘vvhere the prior art itself
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`reflects an appropriate level and a need for testimony is not
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`shown’”) (quoting Litton Indus. Prods., Inc. v. Solid State Sys.
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`Corp., 755 F.2d 158, 163 (Fed. Cir. 1985).
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`Facts Related To Secondary Considerations
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`05. There is no evidence on record of secondary considerations of
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`non-obviousness for our consideration.
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`ANALYSIS
`
`Claims I-I8 and 28-29 rejected under 35 US. C. § 102(b) as being
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`anticipated by Downs
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`The Appellants first contend that Downs fails to describe the feature of a
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`meta-right that is provided in digital form and is enforceable by a repository
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`as required by claims 1 and 10. App. Br. 5-6. We disagree with the
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`Appellants. Downs describes a content usage layer that permits the
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`specification and enforcement of the conditions or restrictions imposed on
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`Petitioner Apple Inc. - EX. 1047, p. 6
`
`Petitioner Apple Inc. - Ex. 1047, p. 6
`
`

`

`Appeal 2009-011700
`Application 10/162,701
`
`the use of content at end user devices. FF 02. The specification and
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`enforcement of conditions are usage rights. These usage rights are included
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`in a metadata container. FF 03. Usage rights include conditions that may
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`specify the number of plays allowed for the content, whether the creation of
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`a secondary copy is permitted, the number of secondary copies, or whether
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`the content can be copied to an external device. FF 02. As such, the usage
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`conditions embedded in the metadata container are defined and enforceable,
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`which is the same as the meta-rights of the claimed invention.
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`The Appellants specifically contend that the usage rights described by
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`Downs are for consumers and are not meta-rights the content provider or
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`store exercises to issue rights to consumers. App. Br. 6. We disagree with
`
`the Appellants. First, the Appellants fail to provide any specific rationale as
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`to the general allegation that Downs’ usage rights cannot be the claimed
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`meta-rights. As discussed supra, the usage rights embedded in the metadata
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`container are the same as the claimed meta-rights. App. Br. 6. Additionally,
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`Downs describes that the content stores can add and narrow the usage
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`conditions as long as the original conditions are not invalidated. FF 02. As
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`such, the content providers set and define the original conditions and content
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`stores can add or narrow conditions. Therefore, the Appellants’ argument
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`that the stores simply pass usage conditions on to the consumers is not found
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`persuasive.
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`The Appellants further argue that the usage rights described by Downs
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`are simply passed from the store or distributor to the consumer and there is
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`not description as to how to specify and control what usage rights and
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`conditions can be added or removed. App. Br. 6. We disagree with the
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`Appellants. Claim 1 fails to recite any limitations requiring how to specify
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`Petitioner Apple Inc. - EX. 1047, p. 7
`
`Petitioner Apple Inc. - Ex. 1047, p. 7
`
`

`

`Appeal 2009-011700
`Application 10/162,701
`
`and control What usage rights and conditions can be added or removed. As
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`such, the Appellants are arguing limitations not found in the claims and
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`these arguments are not found persuasive.
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`The Appellants additionally contend that Downs fails to describe meta-
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`rights specifying (1) a derivable right that can be derived from exercising the
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`meta-right by the rights consumer, (2) a condition that must be satisfied to
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`exercise the meta-right, and (3) a state variable related to the condition.
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`App. Br. 7-8. The Appellants specifically argue that Downs merely
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`describes purchase transaction criteria and not meta-rights. App. Br. 7. We
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`disagree with the Appellants. As discussed supra, Downs describes usage
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`rights embedded in a metadata container that describes a right that can be
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`derived from exercising the usage right. FF 02. For example, Downs
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`describes a usage right of the ability to create a secondary copy of purchased
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`content and the exercise of this usage right allows a user to create a copy.
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`FF 02. Downs further describes a condition that must be satisfied in order to
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`exercise usage rights. FF 02. For example, Downs describes a usage right
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`of specifying the number of secondary copies a user is permitted to make,
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`Where the condition that must be satisfied is that the number of copies
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`already made must be below a defined threshold number. FF 02. Downs
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`also describes a state variable to a condition, including variables for the
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`number of copies already created or a variable describing the total number of
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`copies permitted. FF 02. Therefore, Downs describes more than a mere
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`financial transaction. The Appellants fail to provide any further rationale as
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`to how Downs is deficient in describing the claimed limitations and as such
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`the Appellants’ arguments are not found persuasive.
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`Petitioner Apple Inc. - Ex. 1047, p. 8
`
`Petitioner Apple Inc. - Ex. 1047, p. 8
`
`

`

`Appeal 2009-011700
`Application 10/ 162,701
`
`The Appellants further contend that dependant claims 2-9, 11-18, and
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`28-29 are allowable for the same reasons discussed supra. App. Br. 8.
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`However, the Appellants’ arguments in support of claims 1 and 10 were not
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`found persuasive supra and therefore are not found persuasive here for the
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`same reasons .
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`CONCLUSIONS OF LAW
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`The Examiner did not err in rejecting claims 1-18 and 28-29 under 35
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`U.S.C. § 102(b) as being anticipated by Downs.
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`DECISION
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`To summarize, our decision is as follows.
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`0 The rejection of claims 1-18 and 28-29 under 35 U.S.C. § 102(b) as
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`being anticipated by Downs is sustained.
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`No time period for taking any subsequent action in connection with this
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`appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
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`§ 1.136(a)(1)(iv) (2007).
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`AFFIRMED
`
`mev
`
`NIXON PEABODY, LLP
`
`401 9TH STREET, NW
`
`SUITE 900
`
`WASHINGTON DC 20004-2128
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`Petitioner Apple Inc. - EX. 1047, p. 9
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`Petitioner Apple Inc. - Ex. 1047, p. 9
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`