Ex Parte Cok

Board of Patent Appeals and Interferences

Jul 7, 2004

09498379 (B.P.A.I. Jul. 7, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RONALD S. COK
____________
Appeal No. 2003-2149
Application No. 09/498,379
____________
ON BRIEF
____________
Before McQUADE, NASE, and DIXON, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 57 to 62,
which are all of the claims pending in this application.
We REVERSE.
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Application No. 09/498,379
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BACKGROUND
The appellant's invention relates to systems for the mass production and
distribution of data, with or without encryption, and its decryption and playback by
specially enabled machines utilizing a digital medium. More particularly, the appellant's
invention relates to digital playback devices and storage media with embedded
identifiers which provide control of copying and playback (specification, p. 1). A copy of
the dependent claims under appeal is set forth in the appendix to the appellant's brief.
Claims 57 and 59, the independent claims on appeal, read as follows:
57. A method for secure distribution and access to digital data, comprising:
a) providing an encryption key set having an encryption key and a
decryption key that can be divided into multiple parts, each part of which is
associated with a component of a secure distribution system;
b) encrypting the digital data with the encryption key to produce encrypted
digital data;
c) supplying the encrypted digital data along with a first part of the
decryption key that is associated with the digital data to a playback device;
d) supplying a second part of the decryption key that is associated with the
playback device to the playback device; and
e) combining the parts of the decryption keys in the playback device and
using the combined decryption key to decrypt the encrypted digital data.
59. A system for secure distribution and access to digital data, comprising:
a) a plurality of system components;
b) an encryption key set having an encryption key and a decryption key
that can be divided into multiple parts, wherein a part of the decryption key is
associated with each of the system components;
c) means for encrypting the digital data using the encryption key; and
d) means for receiving and combining the parts of the decryption key and
decrypting the encrypted digital data.
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The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Obata et al. (Obata) 6,072,876 June 6, 2000
Mott et al. (Mott) 6,170,060 Jan. 2, 2001
Claims 57 to 62 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Obata in view of Mott. The full basis for this rejection as set forth in the final
rejection (Paper No. 6, mailed November 15, 2002) is as follows:
As to claim 57, Obata teaches a method for secure distribution and access
to digital data, comprising (column 1 lines 8-25):
a) Providing an encryption key set having an encryption key and a
decryption key that can be divided into multiple parts, each parts of which
is associated with a component of a secure distribution system (column 2
lines 46-65 and column 4 lines 45-60 and column 14 lines 11-38);
b) Encrypting the digital data with the encryption key to produce
encryption digital data (column 4 lines 45-60 and column 14 lines 11-38);
c) Supplying the encrypted digital data along with a first part of the
decryption key that is associated with digital data (column 4 lines 45-60
and column 14 lines 11-38);
d) Supplying a second part of the decryption key (column 4 lines 45-60
and column 14 lines 11-38);
e) Combining the parts of the decryption keys and using the combined
decryption key to decrypt the encrypted digital data (column 13 lines 11-21
and Fig. 2).
Obata does not specifically teach applying the encryption key and
decryption key to a playback device. However, Mott teaches apply crypto
technology to a playback device (Fig. 2). It would have been obvious to one of
ordinary skill in the art at the time of the invention to allow the crypto method of
Obata to be applied to a playback device so that the data can be securely
transmitted from/to the playback device.
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As to claim 58, a third party of the decryption key is taught by Obata as
other entity (Fig. 1).
Claims 59-62 are rejected for the similar reason as claim 57.
The appellant's argument in the brief (Paper No. 11, filed February 12, 2003) is
as follows:
Applicant does not agree with the Examiner's conclusion that his invention
is obvious in light of Obata et al. and Mott et al. for the following reasons. Obata
describes a method for depositing a private key used in a crypto system that
includes the steps of dividing the private key into first and second parts at a user
entity and maintaining the first part at the user entity. The second part is
deposited from the user entity to another entity. In response to a user request
from the user entity, the second part is delivered to the user entity, and the first
and second parts are combined and used to decrypt data at the user entity.
Applicant's invention includes the feature of supplying encrypted data
along with a first part of the decryption key. The Examiner suggests that this
feature is disclosed by Obata at Col. 4, lines 45-60, and Col. 14, lines 11-38.
However a careful reading of the referenced sections reveals no mention of
Obata supplying encrypted data along with a part of a decryption key.
Mott discloses a system for targeting digital information to a playback
device, wherein an ID is embedded in the playback device and the ID is also
embedded in digital data supplied to the playback device. The IDs are compared
and the digital information is played if the IDs match. Mott does not teach, show
or suggest that the ID is a decryption key. Therefore Mott cannot be read as
suggesting supplying a part of a decryption key along with digital data to a
playback device.
The examiner's response to this argument in the answer (Paper No. 12, mailed
May 16, 2003) is as follows:
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Appellant's arguments are based on believing that Obata (U. S. Patent
6,072,876) fails to teach supplying encrypted data along with a part of a
decryption key. Obata teaches supplying a part of encryption/decryption key
(column 4 lines 45-60 and column 14 lines 11-38). There are only two ways that
crypto keys can be delivered: keys are delivered alone, or keys are delivery with
encrypted/decrypted data. It would have been obvious to one of ordinary skill in
the art to choose either method of delivering crypto key according to user's
design choice because of the following two main reasons:
First, appellant has no mention of any advantages in the specification that
choose sending crypto key along with encrypted data over sending the crypto
key alone; and also, appellant has no mention that choosing sending crypto key
along with encrypted data rather than sending the crypto key alone is used for a
particular purpose, or solves a stated problem. See, In re Chu, 36 F.3d 292, 36
USPQ2d 1089 (Fed. Cir. 1995); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA
1975).
Secondly, sending crypto key along with encrypted data or sending crypto
key alone performs equally well to appellant's claimed invention: either method
results user to receive a crypto key so that the user can the key to encrypt or
decrypt data. See, In re Gal, 980 F.2d 717, 720-21, 25 USPQ2d 1076,
1078-1079 (Fed. Cir. 1992); In re Launder and Hosmer, 222 F.2d 371, 105
USPQ 446 (CCPA 1955).
Thus, it would have been obvious to one of ordinary skill in the art to
realize that it is indeed a design choice in Obata's system to use either method to
deliver crypto keys.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
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1 Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966)
Initially, we note that the examiner's above-quoted conclusions of what would
have been obvious to one of ordinary skill in the art set forth in the examiner's response
to the appellant's argument (answer, pp. 3-4) are not part of the actual rejection under
appeal.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that would have led one of ordinary skill in the art to
combine the relevant teachings of the references to arrive at the claimed invention. See
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
As set forth in the Manual of Patent Examining Procedure (MPEP) § 2141:
Office policy has consistently been to follow Graham v. John Deere Co.[1]
in the consideration and determination of obviousness under 35 U.S.C. 103. As
quoted above, the four factual inquires enunciated therein as a background for
determining obviousness are briefly as follows:
(A) Determining of the scope and contents of the prior art;
(B) Ascertaining the differences between the prior art and the claims in
issue;
(C) Resolving the level of ordinary skill in the pertinent art; and
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(D) Evaluating evidence of secondary considerations.
Against this background, the obviousness or non-obviousness of the claimed
subject matter under 35 U.S.C. § 103 must be determined.
Thus, initially, the scope and content of the prior art are to be determined. As set
forth above, in the prior art rejection before us in this appeal (final rejection, pp. 2-3), the
examiner did briefly set forth the scope and content of Obata and Mott.
Secondly, the differences between the applied prior art (i.e., Obata) and the
claims at issue are to be ascertained. This the examiner has not done. While the
examiner did state with respect to claim 57 that "Obata does not specifically teach
applying the encryption key and decryption key to a playback device," this does not
constitute the differences between Obata and claim 57. Clearly, Obata does not teach
or suggest steps c), d) and e) of claim 57. The examiner did not ascertain the
differences between Obata and independent claim 59.
Thirdly, the examiner must determine if the ascertained differences between the
subject matter sought to be patented and the combined teachings of the applied prior
art are such that the subject matter as a whole would have been obvious at the time the
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invention was made to a person having ordinary skill in the art. The examiner has not
determined that the actual differences between the subject matter sought to be patented
and the combined teachings of the applied prior art are such that the subject matter as a
whole would have been obvious at the time the invention was made to a person having
ordinary skill in the art. Thus, the examiner has not presented a prima facie case of
obviousness.
Moreover, it is clear to us that the teachings of the applied prior art would not
have made it obvious at the time the invention was made to a person of ordinary skill in
the art to have modified Obata to arrive at the claimed subject matter for the reasons set
forth by the appellant in the brief (p. 3). In that regard, the applied prior art does not
suggest supplying encrypted digital data along with a first part of the decryption key that
is associated with the digital data to a playback device. As to the examiner's
conclusions of what would have been obvious to one of ordinary skill in the art set forth
in the examiner's response to the appellant's argument (answer, pp. 3-4), we note that
the conclusion that the claimed subject matter is prima facie obvious must be supported
by evidence, as shown by some objective teaching in the prior art or by knowledge
generally available to one of ordinary skill in the art that would have led that individual to
combine the relevant teachings of the references to arrive at the claimed invention. See
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections
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based on 35 U.S.C. § 103 must rest on a factual basis with these facts being interpreted
without hindsight reconstruction of the invention from the prior art. The examiner may
not, because of doubt that the invention is patentable, resort to speculation, unfounded
assumption or hindsight reconstruction to supply deficiencies in the factual basis for the
rejection. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968).
For the reasons set forth above, the examiner has not established a prima facie
case of obviousness and accordingly the decision of the examiner to reject claims 57 to
62 under 35 U.S.C. § 103 is reversed.
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CONCLUSION
To summarize, the decision of the examiner to reject claims 57 to 62 under
35 U.S.C. § 103 is reversed.
REVERSED
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
Appeal No. 2003-2149
Application No. 09/498,379
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