Ex Parte Decime

Board of Patent Appeals and Interferences

Nov 21, 2008

10229206 (B.P.A.I. Nov. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JERRY DECIME
____________

Appeal 2008-1926
Application 10/229,206
Technology Center 2400
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Decided: November 21, 2008
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Before JOSEPH L. DIXON, JEAN R. HOMERE, and STEPHEN C. SIU,
Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of 1-30 and 34-36. We have jurisdiction under
35 U.S.C. § 6(b).

We REVERSE.

Appeal 2008-1926
Application 10/229,206

THE INVENTION
Appellant invented a system and method for authenticating digital
content of digital images. (Spec. 1). An understanding of the invention can
be derived from a reading of exemplary claim 1, which is reproduced below.

1. A system for authenticating digital content recorded by a
recording device; comprising:

a memory device including a secure section configured to store
the digital content, and

a control system configured to block access to the digital
content stored in the secure section except to permit one or more
portions of the digital content to be transmitted to a certification and
validation authority where the one or more portions of the digital
content is maintained in a secure repository if the authenticity of the
digital content is questioned.

PRIOR ART
The prior art references of record relied upon by the Examiner in
rejecting the appealed claims are:
Kondoh US 6,968,058 B1 Nov. 22, 2005
(filed Apr. 19, 1999)
Murphy US 6,282,362 B1 Aug. 28, 2001

REJECTIONS
The Examiner rejected claims 1-5, 7-13, 15-24, 26-30, and 34-35
under 35 U.S.C. § 102(e) as being anticipated by Kondoh.
The Examiner rejected claims 6, 14, 25, and 36 under 35 U.S.C.
§ 103(a) as being unpatentable over Kondoh, and further in view of Murphy.
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Rather than reiterate the conflicting viewpoints of the Examiner and
Appellant regarding the above-noted rejections, we refer to the Examiner's
Answer (mailed May 23, 2007) for the reasoning in support of the rejections,
and to Appellant’s Brief (filed Jan. 16, 2007) and Reply Brief (filed Jul. 23,
2007) for the arguments thereagainst.

OPINION
In reaching our decision in this appeal, we have carefully considered
Appellant’s Specification and claims, the applied prior art references, and
the respective positions articulated by Appellant and the Examiner. As a
consequence of our review, we determine the following.

35 U.S.C. § 102
"[A]nticipation of a claim under § 102 can be found only if the prior
art reference discloses every element of the claim . . . ." In re King, 801
F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik
GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir.
1984)). "[A]bsence from the reference of any claimed element negates
anticipation." Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571
(Fed. Cir. 1986).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987). Analysis of whether a claim is patentable
over the prior art under 35 U.S.C. § 102 begins with a determination of the
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scope of the claim. We determine the scope of the claims in patent
applications not solely on the basis of the claim language, but upon giving
claims their broadest reasonable construction in light of the specification as
it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly
interpreted claim must then be compared with the prior art.
Appellants have the opportunity on appeal to the Board to
demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006).
In rejecting claims under 35 U.S.C. § 102, “[a] single prior art
reference that discloses, either expressly or inherently, each limitation of a
claim invalidates that claim by anticipation.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1375-76 (Fed. Cir. 2005) (citation omitted).
Appellant argues in the Reply Brief at page 2-4 that Kondoh fails to
teach each and every element in independent claim 1 and the Examiner fails
to establish a prima facie case of anticipation. Appellant also states that the
Examiner's response "raises the question of whether the claims and the
application have been understood throughout the prosecution of the present
application." (Reply Br. 3). We agree with Appellant’s contentions in the
Briefs, and we also question whether the Examiner understood the claimed
and disclosed invention.
From our review of Appellant's Specification and claims, we note that
the certification invalidation of authority is an independent third party which
stores and authenticates the digital data. Furthermore, the data located in the
camera is not accessible (whether encrypted or unencrypted) until some data
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Application 10/229,206

is transmitted to the independent third party. Furthermore, the Examiner's
reliance, in the Answer, upon the same three columns for a majority of the
teachings and no correlation in the Answer to specific teachings for the
claimed elements raises the question of whether or not the prior art teaches
the claimed invention.
Furthermore, with respect to the Examiner's "Response to Argument"
section at page 10 of the Answer, the Examiner maintains that not only does
Kondoh teach what Appellant claims, but also teaches encrypting the image
which would effectively anticipate "blocking access" since unless the key is
used for encryption is obtained, access to the actual content of the image is
not possible. We disagree with the Examiner’s conclusion. We find that
blocking access to the data, whether the data is encrypted or unencrypted,
does not allow retrieval and use thereof and Kondoh allows for the detection
of alteration of the image data. We find that if you can get the data in either
format, whether you can decrypt it or not, you have access to the data in
some form.
Additionally 35 U.S.C. § 102 requires "anticipation" rather than
"effective anticipation" as the Examiner seems to pose in the responsive
arguments. Furthermore, the Examiner’s statement that the invention is "not
patently distinct from Kondoh's teachings" seems to imply more of an
obviousness-type rationale in the rejection rather than anticipation which is
the grounds of rejection on appeal. Here, we find no relevance of the
teachings identified by the Examiner at columns 5-7 and 8-12 of Kondoh to
the claimed invention. Additionally, we note the Examiner has not provided

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correlations of the claimed elements in any of the independent claims rather
than broad citations to columns in Kondoh. Therefore, we find that the
Examiner has not set forth a clear and persuasive showing of anticipation of
the claimed invention based upon the teachings of Kondoh alone.

35 U.S.C. § 103
Similarly, with respect to the rejections under 35 U.S.C. § 103, the
Examiner has not shown how the teachings of Murphy remedy the noted
deficiencies in the teachings of Kondoh.

SEARCH HISTORY
As a note, the Examiner should search the memory storage technology
for relevant storage and restrictions on access thereto rather than the
encryption/security area.

CONCLUSION OF LAW
We reverse the rejection of claims 1-5, 7-13, 15-24, 26-30, and 34-35
under 35 U.S.C. § 102, and we reverse the rejection of claims 6, 14, 25, and
36 under 35 U.S.C. § 103(a).

DECISION

REVERSED

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pgc

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