Ex Parte Downey

Board of Patent Appeals and Interferences

Feb 9, 2011

11123758 (B.P.A.I. Feb. 9, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/123,758 05/06/2005 Kyle F. Downey 12510/81 8448
26646 7590 02/09/2011
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
LIPMAN, JACOB
ART UNIT PAPER NUMBER
2434
MAIL DATE DELIVERY MODE
02/09/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte KYLE F. DOWNEY
____________________

Appeal 2009-007220
Application 11/123,758
Technology Center 2400
____________________

Before LANCE LEONARD BARRY, JOHN A. JEFFERY, and THU A.
DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-007220
Application 11/123,758

I. STATEMENT OF CASE
Appellant appeals the Examiner’s final rejection of claims 1, 3-8, 36,
and 41 under 35 U.S.C. § 134(a). Claims 2, 9-35, 37-40, and 42-45 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

A. INVENTION
According to Appellant, the invention relates to the secure distribution
of content over a communications network such as the Internet (Spec. 1, ll.
3-4).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and reproduced below:
1. A method for secure distribution of a content item over a
communications network, comprising:

packaging the content item into a plurality of blocks of
data;

distributing at least one block of data from the plurality
of blocks of data for the content item to at least one of a
plurality of content sources in a peer-to-peer network, wherein
the at least one content source serves as a distribution point for
the at least one block of data;

receiving a request from a subscriber for the content
item, the content item made available over the communications
network;

verifying an authorization for the subscriber to access the
content item; and
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Application 11/123,758

providing to the subscriber a list identifying at least one
particular content source as a function of verifying the
authorization, wherein the at least one particular content source
makes available to the subscriber a particular block of data for
the content item that is encrypted.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tormasov US 2002/0147815 A1 Oct. 10, 2002
Schleicher US 7,047,406 B2 May 16, 2006

Claims 1, 3-8, 36, and 41 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Tormasov in view of Schleicher.

II. ISSUE
Has the Examiner erred in concluding that Tormasov in view of
Schleicher would have suggested “verifying an authorization for the
subscriber to access the content item” (claim 1)? In particular, the issue
turns on whether Schleicher would have suggested authorization to access
content items.

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Schleicher
1. Schleicher relates to peer-to-peer networks (col. 3, l. 13), including a
secure e-delivery network that enables subscription-based
decentralized file downloads to the client nodes, where users may
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Appeal 2009-007220
Application 11/123,758

schedule delivery of content over the network on a fee and non-fee
basis (col. 3, ll. 32-35).
2. Server nodes and client nodes form extranets that are protected by
firewalls, wherein the extranets are private networks that use the
public Internet as its transmission system but require passwords to
gain entrance (col. 3, ll. 47-52; Figs. 1A-B).
3. The client application allows the client node to authenticate other
client nodes and to both receive content and serve content (col. 4, ll.
2-4).

IV. ANALYSIS
Appellant argues that “Schleicher describes a process of creating a
‘fingerprint’ for each file to be transmitted on a peer-to-peer network”
wherein the fingerprint “allows a user to use the corresponding public key of
the publisher of the file to authenticate the file” (App. Br. 7-8).
Accordingly, Appellant contends that “the authentication process described
in Schleicher verifies the identity of a user, but does not verify that a user is
authorized to access the requested file, for example, by verifying that the
user has a subscription arrangement with the content owner associated with
the requested file” (App. Br. 8).
The Examiner responds that “Schleicher is clearly disclosing
authenticating the client node itself, and not only the content as applicant
argues” (Ans. 4). The Examiner also points out that “Schleicher discloses
using passwords to authenticate nodes” (id.) and that “Schleicher discloses a
server node assists a client node to authenticate other client nodes” (Ans. 4-
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Application 11/123,758

5). Therefore, the Examiner finds that “Schleicher does disclose
authenticating the requesting computer” (Ans. 5).
Appellant’s contention that Schleicher does not “verify that a user is
authorized to access the requested file, for example, by verifying that the
user has a subscription arrangement with the content owner associated with
the requested file” (App. Br. 8) is not commensurate in scope with the
language of claim 1. In particular, claim 1 does not recite any “verifying
that the user has a subscription arrangement with the content owner
associated with the requested” as Appellant contends. In fact, though
Appellant argues that “the authentication process described in Schleicher
verifies the identity of a user,” (App. Br. 7-8), claim 1 does not preclude
such verification of the user identity in addition to verifying the
authorization of the user to access the content item. That is, claim 1 merely
requires “verifying an authorization for the subscriber to access the content
item” as specifically recited.
We note that by arguing that Schleicher does not describe the claimed
invention (App. Br. 7-8), Appellant appears to be arguing that individually,
Schleicher does not anticipate the claimed features. However, the Examiner
rejects the claims as being obvious over the combined teachings of the
references, and the test for obviousness is not what each reference teaches
but what the combined teachings would have suggested to one of ordinary
skill in the art. See In re Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Schleicher discloses that users may schedule delivery of content over
the network on a fee and non-fee basis (FF 1). Thus, contrary to Appellant’s
contention, we find that Schleicher does suggest that the user has a
subscription arrangement with the content owner associated with the
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Appeal 2009-007220
Application 11/123,758

requested file in order to schedule the delivery of content on a fee or non-fee
basis.
Furthermore, Schleicher discloses server nodes and client nodes that
form extranets protected by firewalls, wherein extranets require passwords
to gain entrance (FF 2). In Schleicher, the client application allows the
client node to authenticate other client nodes and to both receive content and
serve content (FF 3). We find Schleicher’s firewall that requires passwords
to gain entrance to comprise a firewall requiring authorization to access the
content items upon entrance. Thus, we find no error in the Examiner’s
conclusion that Schleicher at the least suggests verifying authorization for
the subscriber to access the content item.
Appellant admits in the Reply Brief that, in Schleicher, there is “a
general authentication,” but adds that there is “no determination that a user is
authorized to access a particular content item” (Reply Br. 2). However, such
newly added argument is also not commensurate in scope with the specific
recited language of claim 1. That is, claim 1 does not recite any “particular”
content item.
By arguing that Schleicher does not disclose that a “particular”
content item is authorized to access, Appellant appears to be arguing that
Schleicher does not suggest authorizing access only to a particular content
item. However, claim 1 does not require any such access to “only” a
“particular” content item, but merely that the content item is authorized for
access. That is, claim 1 does not preclude the authorization of access to all
content items including a particular content item.
As discussed above, we find no error in the Examiner’s conclusion
that Schleicher at the least suggests verifying authorization for the subscriber
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Application 11/123,758

to access the content item. In fact, even Appellant admits that Schleicher
disclose a general authorization to access content items (Reply Br. 2). We
find such general authorization to access content items to comprise
authorization to access a particular content item in the accessed content
items.
Accordingly, we affirm the rejection of representative claim 1, and
independent claims 36 and 41 falling therewith and claims 3-8 depending
respectively from claim 1, under 35 U.S.C. § 103(a), as being unpatentable
over the combined teachings of Tormasov and Schleicher.

V. CONCLUSIONS AND DECISION
We affirm the Examiner’s rejection of claims 1, 3-8, 36, and 41 under
35 U.S.C. § 103(a).
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

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