Ex Parte Chatani

Patent Trial and Appeal Board

May 21, 2013

11480203 (P.T.A.B. May. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MASAYUKI CHATANI
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Appeal 2011-005939
Application 11/480,203
Technology Center 3600
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-005939
Application 11/480,203

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 8-18. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE. 1

THE INVENTION
Claims 8 and 14, reproduced below, are illustrative of the subject
matter on appeal.
8. A method for delivery of primary media
content in digital form, comprising:
establishing a communication link between
a client computer and a server, said client
computer having a detachable storage media
detachably installed therein;
transmitting identifier data associated with
the detachable storage media from said client
computer to said server with a request for primary
media content, the server associating identifier
data with a user, wherein identifier data associated
with the detachable storage media authorizes
access to download specified content from among
said primary media content stored on the server;
downloading to said client computer said
specified primary media content;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Jun. 1, 2010) and Reply Brief (“Reply Br.,” filed Dec. 3, 2010),
and the Examiner’s Answer (“Ans.,” mailed Oct. 4, 2010).

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recording usage of portions of said
downloaded primary media content used by the
user; and
charging the user for the primary media
based on portions of the specified primary media
actually used.

14. A method for delivery of primary media
content in digital form, comprising:
establishing a communications link between
a client computer and a server, said client
computer having a detachable storage media
detachably installed therein;
transmitting user identifier data from said
client computer to said server with a request for
primary media content;
downloading to said client computer said
primary media content, wherein the downloaded
primary content comprises time sensitive content
data, and further comprising erasing expired
primary contents that are not used by the user upon
the lapse of a specified period of time;
recording usage of portions of said
downloaded primary media content used by the
user; and
charging the user for the primary media
content based on portions of the primary media
actually used.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Dolphin US 5,677,953 Oct. 14, 1997
Appeal 2011-005939
Application 11/480,203

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Routtenberg
Ginter
Kupka
US 2002/0049717 A1
US 6,389,402 B1
US 2003/0221113 A1
Apr. 25, 2002
May 14, 2002
Nov. 27, 2003

The following rejection2 is before us for review:
1. Claims 8-18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kupka, Dolphin, Routtenberg, and Ginter.

ISSUES
The first issue is whether Kupka or Dolphin teaches “identifier data
associated with the detachable storage media authorizes access to download
specified content from among said primary media content stored on the
server” as recited in claim 8.
The second issue is whether Routtenberg teaches “erasing expired
primary contents that are not used by the user upon the lapse of a specified
period of time” as recited in claim 14.

ANALYSIS
Claims 8-13
We are persuaded by the Appellant’s argument (App. Br. 4-6) that the
Examiner erred in rejecting claim 18 under 35 U.S.C. § 103(a) as being
unpatentable over Kupka, Dolphin, Routtenberg, and Ginter. We agree with
the Appellant that Kupka’s description (see paras. [0011] and [0096]; see
also Ans. 9-11) of sending a compound key to a server to decrypt content
fails to teach “identifier data associated with the detachable storage media

2 The rejection of claims 8-13, 15, and 18 under 35 U.S.C. § 112, second
paragraph, is withdrawn.
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authorizes access to download specified content from among said primary
media content stored on the server.” See App. Br. 4-6 and Reply Br. 3. The
Examiner is conflating decryption with downloading.
Accordingly, we reverse the rejection of claim 8 and claims 9-13,
dependent thereon, under 35 U.S.C. § 103(a) as being unpatentable over
Kupka, Dolphin, Routtenberg, and Ginter.

Claims 14-18
We are persuaded by the Appellant’s argument that the Examiner
erred in rejecting claim 14 under 35 U.S.C. § 103(a) as being unpatentable
over Kupka, Dolphin, Routtenberg, and Ginter. At issue is claim 14’s
recitation of “erasing expired primary contents that are not used by the user
upon the lapse of a specified period of time.” App. Br. 7-9 and Ans. 13.
In their rejection, the Examiner found that Kupka’s paragraph [0080]
teaches deleting temporary data which is verified to be invalid or unusable
(Ans. 8), but admits that this does not disclose the limitation at issue. The
Examiner then relies upon paragraph [0054] of Routtenberg to teach this
limitation. Id. We agree with the Appellant and the Examiner that Kupka’s
description of deleting temporary files, containing unencrypted protected
electronic data, upon completion of a reading/execution/playback process
fails to teach the limitation at issue. See Reply Br. 4. Further, we agree with
the Appellant that Routtenberg’s paragraph [0054]’s description of an audio
player performing housekeeping by deleting content with an expired digital
certificate also fails to teach the limitation at issue. See App. Br. 7-9.
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Accordingly, we reverse the rejection of claim 14, and claims 15-18,
dependent thereon, under 35 U.S.C. § 103(a) as being unpatentable over
Kupka, Dolphin, Routtenberg, and Ginter.

DECISION
The decision of the Examiner to reject claims 8-18 is reversed.

REVERSED

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