Ex Parte Benoit

Board of Patent Appeals and Interferences

Jul 7, 2009

10084755 (B.P.A.I. Jul. 7, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE

__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HERVE BENOIT
__________

Appeal 2008-003362
Application 10/084,755
Technology Center 2100
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Decided: July 7, 20091
__________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY, III, and
STEPHEN C. SIU, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 CFR § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s rejection of claims 1-10. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

The Invention
The disclosed invention relates generally to a decoding and
descrambling system that receives protected information and supplies an
enabling signal to enable a descrambler to descramble or decode the
protected information (Spec. 2).
Independent claim 1 is illustrative:
1. A system to receive encoded and scrambled data signals
and process the signals in order to convert them to output stimuli that
can be understood by a user of the system, the system comprising:
a data signal decoder for decompressing the data signals;
an output device for generating the output stimuli on the
basis of output signals from the decoder;
descrambling means for descrambling the data signals,
said descrambling means being activated by an enabling signal;
and
enabling means for receiving protected information from
a transmitter transmitting the data signals and supplying the
enabling signal following the reception of said protective
information,
wherein the descrambling means execute a conditional access
software program for controlling the descrambling of said data
signals, said software program being transported to the descrambling
means by the enabling signal.

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The References
The Examiner relies upon the following references as evidence in
support of the rejections:
Gammie US 5,029,207 Jul. 02, 1991
Newby US 6,115,821 Sep. 05, 2000
Della Valle EP 1168137 A1 Jan. 02, 2002
Kasahara US 2002/0001383 A1 Jan. 03, 2002
Candelore US 6,912,513 B1 Jun. 28, 2005
(filed Oct. 29, 1999)

EBU Project Group B/CA, EBU Technical Review, (Winter 1995), pg. 71,
(“EBU”).

The Rejections
1. The Examiner rejects claims 1, 3, 6, 9, and 10 under 35 U.S.C. §
103(a) as being unpatentable over Newby, Candelore, and Kasahara.
2. The Examiner rejects claims 2 and 52 under 35 U.S.C. § 103(a) as
being unpatentable over Newby, Candelore, Kasahara, and Gammie.
3. The Examiner rejects claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over Newby, Candelore, Kasahara, and EBU.

2 The Examiner rejects claim 2 under 35 U.S.C. § 103(a) as being
unpatentable over Newby, Candelore, Kasahara, and Gammie but rejects
claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Newby,
Candelore, and Kasahara. Because claim 5 depends from claim 2 and
incorporates each limitation recited in claim 2, we assume the Examiner
rejects claim 5 under 35 U.S.C. § 103(a) as being unpatentable over Newby,
Candelore, Kasahara and Gammie.
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4. The Examiner rejects claims 7 and 83 under 35 U.S.C. § 103(a) as
being unpatentable over Newby, Candelore, Kasahara, and Della
Valle.

ISSUE #1
The Examiner finds that the claimed invention would have been
obvious to one of ordinary skill in the art over the combination of Newby,
Candelore, and Kasahara (Ans. 3-4).
Appellant asserts that it would not have been obvious to one of
ordinary skill in the art to have combined the Newby, Candelore, and
Kasahara references because “the Examiner alleges motivation to combine
Newby with Candelore . . . [and] Kasahara . . . [that are] two completely
separate and unsubstantiated motivations” (App. Br. 10).
Did Appellant demonstrate that the Examiner erred in finding that it
would have been obvious to one of ordinary skill in the art to have combined
the Newby, Candelore, and Kasahara references?

3 The Examiner rejects claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Newby, Candelore, Kasahara, and Della Valle but rejects
claim 8 under 35 U.S.C. § 103(a) as being unpatentable over Newby,
Candelore, and Kasahara. Because claim 8 depends from claim 7 and
incorporates each limitation recited in claim 7, we assume the Examiner
rejects claim 8 under 35 U.S.C. § 103(a) as being unpatentable over Newby,
Candelore, Kasahara and Della Valle.
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ISSUE #2
Appellant asserts that it would not have been obvious to one of
ordinary skill in the art to have combined the Newby, Candelore, and
Kasahara references with the Gammie, EBU or Della Valle reference
because the Examiner provides “completely separate and unsubstantiated
motivations for combining selected disclosure in four different references”
(see, e.g., App. Br. 19).
Did Appellant demonstrate that the Examiner erred in finding that it
would have been obvious to one of ordinary skill in the art to have combined
the Newby, Candelore, and Kasahara references with the Gammie, EBU, or
Della Valle reference?

FINDINGS OF FACT
The following Findings of Facts (FF) are shown by a preponderance
of the evidence.
1. Newby discloses “a conditional access system” (col. 3, ll. 5-6)
including an encryptor that “encrypts the clear information
segments” (col. 3, l. 40) and a decryptor that “decrypts the received
encrypted information segments” (col. 4, ll. 39-40) using “a session
key K” (col. 3, ll. 41-42).
2. Candelore discloses a system that provides “copy protection for a
content” (col. 2, ll. 43-44) that includes a descrambler that
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“descrambles the scrambled content using a local key” (col. 2, ll. 45-
46) in order to “prevent unauthorized copying of clear content” (col.
1, l. 13). Candelore also discloses that the local key is generated
“from a programmable user key according to an authorization code
provided by the content provider” (Abstract).
3. Kasahara discloses encrypting data using “[c]ryptosystems [that use]
polynomials in multivariables” (¶[0002]) and adds “to the above
multivariable polynomial cryptosystem, the combination with noise
and the subsequent scrambling” (¶[0010]) such that “the security is
remarkably enhanced” (id.).
4. Gammie discloses a “conditional-access system for satellite
transmission” (col. 2, ll. 29-30) and “protecting the key during
distribution” (col. 2, ll. 53-54) in which “[t]he source program [is]
scrambled with the key, and the key itself has been encrypted using a
secret serial number” (col. 2, ll. 63-65).
5. ECU discloses a data security system that “must be effective in
preventing piracy” (pg. 71, col. 2) and “integrated into [a] television
set [and accesses] any combination of programme services to which
individual viewers had subscribed” (pg. 71, cols. 1-2).
6. Della Valle discloses a “smart card reader” (¶[0017]) and that data
“installed on the personal computer can be stored on the smart card”
(¶[0023]).

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PRINCIPLES OF LAW
Obviousness
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
Issue #1
As Appellant’s arguments with regard to issue #1 apply to claims 1-
10, we will decide the appeal of claim 1-10 on the basis of claim 1 alone
with respect to issue #1. See 37 C.F.R. § 41.37(c)(1)(vii).
As set forth above, Newby discloses a method and system for
controlling user access to data in which the data is encrypted and decrypted
using a session key (FF 1), Candelore discloses a method and system for
controlling user access to data (i.e., copy protection of data) in which the
data is scrambled and descrambled using a local key (FF 2) that is generated
from a programmable user key based on a code from the content provider,
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and Kasahara discloses encrypting data using polynomials in multivariables
such that “security is remarkably enhanced” (FF 3).
We agree with the Examiner that it would have been obvious to
combine the teachings of the Newby, Candelore and Kasahara references
because each reference discloses elements of data security and conditional
access that would have been known to one of ordinary skill in the art, the
combination of which would have required no more than the mere
rearrangement of the known elements to achieve a predictable result of
controlled data access via data encryption (or scrambling) and decryption (or
descrambling) using a key. “[W]hen a patent ‘simply arranges old elements
with each performing the same function it had been known to perform’ and
yields no more than one would expect from such an arrangement, the
combination is obvious.” KSR, 550 U.S. at 417 (citing Sakraida v. AG Pro,
Inc., 425 U.S. 273, 282 (1976)).
Appellant argues that “the Examiner improperly relies on ‘subjective
belief and unknown authority’ to establish the motivation to combine
references” (App. Br. 10) “because the Examiner has provided no citation
within the references themselves” (id.) and that “the prior art contains no
such ‘clear and particular’ expression of the desirability of combining the
particular teachings” (id. 11). Even assuming Appellant’s contention to be
true that the Examiner has not indicated specific citations within the cited
references themselves describing a motivation for combining the cited
references, we nevertheless find Appellant’s argument unpersuasive because
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the cited references themselves need not explicitly state a specific
motivation for combining references. “Often, it will be necessary for a court
to look to interrelated teachings of multiple patents . . . and the background
knowledge possessed by a person having ordinary skill in the art, all in order
to determine whether there was an apparent reasons to combine the known
elements” KSR, 550 U.S. at 418.
In the present case, the Examiner has made an explicit analysis
detailing obviousness of the combination of references that takes into
account the inferences and creative steps a person of ordinary skill in the art
would have employed. We find that the Examiner’s rationale to combine the
teachings of these references is supported by articulated reasoning with
some rational underpinning to justify the Examiner’s obviousness
conclusion. KSR, 550 U.S. at 418 (“To facilitate review, this analysis should
be made explicit”). Since the reason to combine references need not be
limited to the four corners of the cited references, but rather can be
ascertained from any number of sources, including common knowledge, the
prior art as a whole, or the nature of the problem itself (DyStar Textilfarben
GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361
(Fed. Cir. 2006) (citing In re Dembiczak, 175 F.3d 994, 999 (Fed.Cir.1999))
and since Appellant provides no arguments demonstrating error in the
Examiner’s analysis other than the references themselves allegedly not
containing an explicitly stated motivation, we are unpersuaded by
Appellant’s argument.
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Appellant also argues that “the Examiner relies on impermissible
hindsight in reaching a determination of obviousness” (App. Br. 11) because
“only by the impermissible use of hindsight knowledge of Applicant’s own
disclosure would the Examiner have acquired a motivation to combine the
teachings of the cited references” (id. 13). We disagree. While “[a]
factfinder should be aware . . . of the distortion caused by hindsight bias . . .
[r]igid preventative rules that deny factfinders recourse to common sense . . .
are neither necessary under our case law nor consistent with it” KSR, 550
U.S. at 421.
In the present case, we agree with the Examiner that it would have
been obvious to one of ordinary skill in the art to have combined a method
or system for controlling user access to data by encrypting/scrambling data
and decrypting/descrambling data with a key (Newbie and/or Candelore) and
further enhancing data security by encrypting the data with polynomials in
multivariables (Kasahara). As set forth above, such a combination would
have entailed the mere rearrangement of a known system/method for
controlling data access by data encryption with a key and further ensuring
that encrypting included polynomials in multivariables to achieve the
expected result of secure data encryption and decryption. Nor has Appellant
demonstrated that effecting such a combination was “uniquely challenging
or difficult for one of ordinary skill in the art.” See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
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For at least the aforementioned reasons, we conclude that Appellant
has not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claim 1, or of
claims 2-9, which fall therewith with respect to issue #1.

ANALYSIS (ISSUE #2)
As set forth above, the combination of Newbie, Candelore, and
Kasahara discloses a conditional access system that controls access to data
by encrypting and decrypting data with a key. Gammie also discloses a
conditional access system utilizing a key and further encrypts the key with a
secret serial number (FF 4).
Regarding claims 2 and 5, we agree with the Examiner that it would
have been obvious to one of ordinary skill in the art to have combined the
Gammie reference with the combination of Newbie, Candelore, and
Kasahara because doing so would have entailed no more than combining a
known component of encrypting and decrypting secure data with a key with
another known component of encrypting the key itself with a serial number
to achieve an expected result of enhancing data security. KSR, 550 U.S. at
417.
Similarly, regarding claim 4, we agree with the Examiner that it
would have been obvious to one of ordinary skill in the art to have combined
the EBU reference with the combination of Newbie, Candelore, and
Kasahara because doing so would have entailed no more than combining a
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known component of encrypting and decrypting secure data with a key
(including descrambling data to prevent unauthorized copying or piracy –
Candelore, FF 2) with another known component of utilizing a data security
system in “preventing piracy” (FF 5 - ECU) to achieve an expected result of
enhancing data security to prevent unauthorized copying of data.
We also agree with the Examiner, with regard to claims 7 and 8, that it
would have been obvious to one of ordinary skill in the art to have combined
the Della Valle reference with the combination of Newbie, Candelore, and
Kasahara because doing so would have entailed no more than combining a
known component of encrypting and decrypting secure data with a key with
another known component of storing protected information in a memory to
achieve an expected result of enhancing data security. We disagree with
Appellant’s implication that merely storing protected information in memory
in Newbie, Candelore, and/or Kasahara, would have been “uniquely
challenging or difficult” for one of ordinary skill in the art to have
accomplished.
We also do not find, and Appellant has not demonstrated, that any
more than common sense would have been required on the part of the skilled
artisan to encrypt a key for added security (Gammie), to prevent piracy or
unauthorized copying of data (EBU), or to store information in memory
(Della Valle) in a conditional data access system known to utilize a key to
encrypt and decrypt data to prevent unauthorized data access (Newbie,
Candelore, and Kasahara). “It is common sense that familiar items may
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have obvious uses beyond their primary purposes, and a person of ordinary
skill often will be able to fit the teachings of multiple patents together like
pieces of a puzzle.” KSR 550 U.S. at 402.
Appellant argues that “the Examiner has provided no citation within
the references themselves” (App. Br. 19) and that the “Examiner relies on
impermissible hindsight” (App. Br. 21). We are unpersuaded by Appellant’s
arguments for reasons set forth above.
For at least the aforementioned reasons, we conclude that Appellants
have not sustained the requisite burden on appeal in providing arguments or
evidence persuasive of error in the Examiner’s rejection of claims 2, 4, 5, 7,
or 8 with respect to issue #2.

CONCLUSION OF LAW
Based on the findings of facts and analysis above, we conclude that
Appellants have failed to demonstrate that the Examiner erred in:
1. finding that it would have been obvious to one of ordinary skill
in the art to have combined the Newby, Candelore, and Kasahara references
(issue #1) and
2. finding that it would have been obvious to one of ordinary skill
in the art to have combined the Newby, Candelore, and Kasahara references
with the Gammie, EBU, or Della Valle reference (issue #2).

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DECISION
We affirm the Examiner’s decision rejecting claims 1-10 under
35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

PEB

NXP, B.V.
NXP INTELLECTUAL PROPERTY DEPARTMENT
M/S41-SJ
1109 MCKAY DRIVE
SAN JOSE, CA 95131