Ex parte Kokkinen
| Decision Date | 12 May 2016 |
| Docket Number | Appeal 2013-010748[1] |
| Parties | Ex Parte HEIKKI KOKKINEN Application 11/734, 863 Technology Center 3600 |
| Court | Patent Trial and Appeal Board |
Before TARA L. HUTCHINGS, SHEILA F. MCSHANE, and MATTHEW S. MEYERS Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-11, 14, 15, and 17-24. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellant's claimed invention relates to "content and, more particularly, to techniques for managing sharing, payment and/or rights of distributed content." Spec. ¶ 1.
Claim 1, reproduced below, is the sole independent claim, and is illustrative of the subject matter on appeal:
Claims 1-11, 14, 15, and 17-24 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement.
Claim 1-5, 7-11, 14, 17, 20, and 22-24 are rejected under 35 U.S.C § 103(a) as unpatentable over Williamson (US 2003/0028489, pub. Feb. 6, 2003) and Conrado (US 2009/0193249, pub. July 30, 2009).
Claims 6, 15, 18, 19, and 21 are rejected under 35 U.S.C. § 103(a) as unpatentable over Williamson, Conrado, and Applicant-Admitted Prior Art ("AAPA").[3]
We are not persuaded by Appellant's argument that the Examiner has failed to provide a prima facie case for a rejection under 35 U.S.C. § 112, first paragraph. Br. 2-4.
In the context of the written description requirement, an adequate prima facie case must sufficiently explain what, in the Examiner's view, is missing from the written description. Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007). New or amended claims which introduce elements or limitations which are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967 (CCPA 1971). Adequate written description means that Appellant's Specification must '"convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the [claimed] invention.'" Hyatt v. Dudas, 492 F.3d 1365 1370 (Fed. Cir. 2007) (citing VasCath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)). "When no such description can be found in the [Specification, the only thing the PTO can reasonably be expected to do is to point out its nonexistence." Id. (citing In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996)).
The purpose of the written description requirement is to prevent an applicant from later asserting that he invented that which he did not; the applicant for a patent is therefore required '"to recount his invention in such detail that his future claims can be determined to be encompassed within his original creation.'" Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (citing Vas-Cath lnc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath, Inc., 935 F.2d at 1563-64. Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)).
Here, the Examiner notes that claim 1 has been amended to includethe limitation "establishing an anonymous communication channel between the user device and an authorization proxy for legitimizing the electronic content." Final Act. 2. The Examiner finds that Appellant's Specification at paragraph 76 identifies an anonymous communication, but that does not serve to inherently disclose an anonymous communications channel. Id. at 3. The Examiner concludes that the elements "anonymous communication channel" and "an authorization proxy" constitute new matter. Id. at 2-3.
Appellant contends that the use of an anonymization server through which communication between the parties is conducted, as described at paragraph 69 of the Specification, conveys with reasonable clarity to those skilled in the art that, as of the filing date. Appellant was in possession of the claimed invention, including "establishing an anonymous communication channel between the user device and an authorization proxy for legitimizing the electronic content, " as recited in independent claim 1. Br. 4-5.
However, the Examiner explains that there are multiple ways that anonymous communications can be accomplished, and "an anonymous communication channel is a specific type of anonymous communication means that might be employed by an anonymization server." Ans. 14-15. The Examiner finds that the use of an anonymization server is therefore insufficient support for the claimed anonymous communication channel. Ans. 15.
Here, we are not persuaded by the weight of the evidence that an anonymous communications channel is expressly, implicitly, or inherently disclosed in the Specification in a manner sufficient to demonstrate possession. Therefore, we sustain the Examiner's rejection of independent claim 1 and claims 2-11, 14, 15, and 17-24, which depend therefrom, under 35 U.S.C. § 112, first paragraph.
Independent claim 1 and dependent claims 2-5, 7-11, 14, 17, 20, and 22-24
We are not persuaded by Appellant's argument that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because neither Williamson nor Conrado, alone or in combination, discloses or suggests "conducting, by the processor, a transaction between the user device and the authorization proxy, over the anonymous communication channel, to anonymously legitimize the electronic content in view of the determined aspect(s), " as recited in claim 1. Br. 7-10. The Examiner cites Williamson as disclosing conducting, by the processor, a transaction between the user device and the authorization proxy to legitimize the electronic content in view of the determined aspect(s). Final Act. 4 (citing Williamson ¶ 62). However, the Examiner acknowledges that Williamson does not explicitly disclose that the communication is accomplished anonymously via an anonymous communication channel, and the Examiner cites Conrado to cure the deficiency. Id. (citing Conrado ¶ 28).
Williamson is intended to provide an improved approach to the issue of dealing with unauthorized copying of electronic content by members of the public. Williamson ¶ 11. When a consumer has copies of content that have not been paid for and expresses a wish to purchase a genuine copy of the content, a content management program connects the consumer to a payment/negotiation module of a contract/ownership service. Id. ¶ 62. The consumer negotiates a new contract, the new contract is lodged in a license bank, and the license data embedded in the content at issue is updated. Id.
Conrado discloses that when a user wants to buy rights to access content, the user contacts the content provider via an anonymous channel requesting the rights. Conrado ¶ 28. After an anonymous payment scheme has been conducted, the user sends his public key to the content provider, and the content provider creates a license for the content. Id.
Appellant argues that the rejection of claim 1 is improper because Williamson "merely teaches payment by a user identified by a sniffer program as holding copies of unlicensed content, " and Conrado "simply teaches using a public key to request rights from a content provider." Br. 9. Appellant contends that the combination "at best suggests payment by a user identified by a sniffer program as holding copies of unlicensed content by retrieving license data in a manner invisible to the user, not, to anonymously legitimize." Id.
Appellant further argues that the proposed modification of Williamson by Conrado would render Williamson unsatisfactory for its intended purpose. Id. More particularly. Appellant contends that Williamson is directed to a way of determining content ownership, and asserts that keeping an identity of a user secret, as disclosed by Conrado, would render Williamson unsatisfactory for its intended purpose of determining content ownership. Id. (citing Williamson ¶ 70 Conrado Abstract).
However, the Examiner finds, and we agree, that Williamson is directed to providing an improved approach to the issue of dealing with unauthorized copying of electronic content by members of the public, and that each of Williamson and Conrado is designed to move licenses from content providers to user devices. See Ans. 17.
In our view, modifying Williamson to include an anonymous communication channel, as disclosed by Conrado, is no more than a combination of prior art elements according to their established functions, and yields a predictable result. See KSR Int'l Co. v. Teleflex, Inc., 550 U.S 398, 416 (2007) (...
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