Ex Parte Gauba et alDownload PDFPatent Trial and Appeal BoardJan 9, 201410960383 (P.T.A.B. Jan. 9, 2014) Copy Citation 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. 10/960,383 10/06/2004 Ravi Gauba 80398.P620 4372 8791 7590 01/10/2014 BLAKELY SOKOLOFF TAYLOR & ZAFMAN 1279 Oakmead Parkway Sunnyvale, CA 94085-4040 EXAMINER REAGAN, JAMES A ART UNIT PAPER NUMBER 3621 MAIL DATE DELIVERY MODE 01/10/2014 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 1 ___________ 2 3 BEFORE THE PATENT TRIAL AND APPEAL BOARD 4 ___________ 5 6 Ex parte RAVI GAUBA, 7 CURTIS RAY EUBANKS, 8 KLAUS HOFRICHTER, 9 ANNIE WANG, 10 CLEMENT LAU, 11 and JOSEPH ALEXANDER DARA-ABRAMS 12 ___________ 13 14 Appeal 2011-010508 15 Application 10/960,383 16 Technology Center 3600 17 ___________ 18 19 20 Before ANTON W. FETTING, MEREDITH C. PETRAVICK, and 21 NINA L. MEDLOCK, Administrative Patent Judges. 22 FETTING, Administrative Patent Judge. 23 DECISION ON APPEAL 24 25 26 Appeal 2011-010508 Application 10/960,383 2 STATEMENT OF THE CASE1 1 Ravi Gauba, Curtis Ray Eubanks, Klaus Hofrichter, Annie Wang, 2 Clement Lau, and Joseph Alexander Dara-Abrams (Appellants) seek review 3 under 35 U.S.C. § 134 of a final rejection of claims 1, 3-11, 13-54, 56, and 4 57, the only claims pending in the application on appeal. We have 5 jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 6 The Appellants invented a way of content sharing and authentication 7 between multiple personal video recorders (Specification 1:5-7). 8 An understanding of the invention can be derived from a reading of 9 exemplary claim 1, which is reproduced below [bracketed matter and some 10 paragraphing added]. 11 1. A method of accessing content data, the method comprising: 12 [1] receiving a content data 13 on a storage module 14 of a first recording base station 15 from a content source, 16 wherein 17 the content is encrypted 18 and 19 the storage module comprises a tuner dedicated to 20 the content source; 21 [2] storing the content data on the storage module; 22 [3] transmitting an authorization request 23 to an external authorization service, 24 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed November 16, 2010) and Reply Brief (“Reply Br.,” filed April 1, 2011), and the Examiner’s Answer (“Ans.,” mailed February 2, 2011). Appeal 2011-010508 Application 10/960,383 3 wherein the external authorization service validates the 1 authorization request; 2 [4] receiving a first authorization key 3 with the first recording base station, 4 wherein 5 the first recording base station accesses the content 6 data on the storage module 7 using the first authorization key 8 and 9 the first authorization key associates 10 the content data 11 to 12 the first recording base station; 13 [5] removing the storage module from the first recording base 14 station; 15 [6] connecting the storage module to a second recording base 16 station; 17 [7] transmitting a second authorization request to the external 18 authorization service, 19 wherein the external authorization service validates the 20 second authorization request; 21 and 22 [8] receiving a second authorization key to the second recording 23 base station, 24 wherein 25 the second recording base station accesses the 26 content data on the storage module using the 27 second authorization key 28 and 29 the second authorization key is specific to the 30 second recording base station. 31 Appeal 2011-010508 Application 10/960,383 4 The Examiner relies upon the following prior art: 1 Dolphin US 5,457,746 Oct. 10, 1995 Yap US 2002/0040475 A1 Apr. 4, 2002 Akins US 2004/0177369 A1 Sep. 9, 2004 Claims 1, 3-11, 13-54, 56, and 57 stand rejected under 35 U.S.C. 2 § 103(a) as unpatentable over Akins, Yap, and Dolphin. 3 ISSUES 4 The issues of obviousness turn primarily on whether the art describes or 5 suggests placing a tuner on a removable memory module. 6 FACTS PERTINENT TO THE ISSUES 7 The following enumerated Findings of Fact (FF) are believed to be 8 supported by a preponderance of the evidence. 9 Facts Related to the Prior Art 10 Akins 11 01. Akins is directed to providing conditional access to recorded 12 service instances. Akins, para. [0001]. 13 02. Before a subscriber can record a digital service in the DSCT-PVR, 14 the DSCT-PVR determines whether the DSCT-PVR is entitled to 15 permit access to the service. If the DSCT-PVR is so entitled, it 16 generates at least one decryptor for decrypting the service and 17 stores the decryptor(s) with the service in a storage device. When 18 a subscriber attempts to access the recorded service, the DSCT-19 PVR determines whether the DSCT-PVR is still entitled to permit 20 access to the recorded service. If the DSCT-PVR is so entitled, 21 Appeal 2011-010508 Application 10/960,383 5 the DSCT-PVR then uses the recorded decryptor(s) to decrypt the 1 recorded service. Akins, para. [0016]. 2 03. Referring to Figure 6, the DSCT-PVR 110 includes an input port 3 602, tuners 604, a demultiplexer 606, a transceiver 608, a memory 4 610, a processor 612, a secure element 614, a user-interface 616, a 5 cryptographic device 618, an output port 622, the storage device 6 232, and a reformatter 626. Akins, para. [0092]. 7 04. The secure element 614 is used for, among other things, providing 8 the cryptographic device 618 with the control words used for 9 decrypting the selected service instance. It is important to note 10 that in the conditional access system of the STS 100 the DSCT-11 PVR 110 might not be able to access a selected service instance 12 even though the DSCT-PVR 110 has the necessary keys used for 13 decrypting the selected service instance. In other words, in 14 addition to having all the keys used in accessing the selected 15 service instance, the DSCT-PVR 110 must be “entitled” to access 16 the selected service instance. The DSCT-PVR 110 receives 17 entitlements for service instances from the Entitlement Generator 18 336 of the system controller 332. Akins, para. [0102]. 19 Yap 20 05. Yap is directed to video-on-demand equipment and services. Yap, 21 para. [0003]. 22 06. A storage device is expandable and/or removable such that the 23 user can easily add and/or remove additional storage capacity as 24 desired or needed. Yap, para. [0026]. 25 Appeal 2011-010508 Application 10/960,383 6 Dolphin 1 07. Dolphin is directed to delivering encrypted data on a portable data 2 storage unit and transmitting an access code from a remote 3 location to decrypt the encrypted data. Dolphin 1:11-14. 4 08. Dolphin includes publishing data on a removable or portable 5 media, preferably high density, such as a CD-ROM or a magnetic 6 optical (MO). Thus, one or more publishers may incorporate 7 several, if not, all of their periodic publications on a single media. 8 Dolphin includes partitioning the media according to the different 9 publications into data sets, and then providing a protection, access, 10 and use audit scheme to these data sets. Thus, only validated 11 subscribers are able to gain access to the information stored on the 12 CD-ROM. Dolphin 2:34-44. 13 ANALYSIS 14 Claims 1, 22, 41, 50, and 57 are independent. All of these claims recite 15 a tuner on a removable memory module. We are persuaded by the 16 Appellants’ argument that the art fails to describe a tuner on a removable 17 memory module. The Examiner cites Akins paragraphs [0016], [0017], 18 [0034], and [0092] (Ans. 5) for the tuner, but this recites a tuner that is 19 separate from the memory module. Also, the Examiner cites Yap paragraph 20 [0026] for a removable memory module, but Yap’s tuner is not embedded in 21 the removable module. The Examiner makes no findings or even articulates 22 reasoning as to why one of ordinary skill would have placed Akins’ tuner on 23 Yap’s memory module instead of separately as in Yap. The Examiner’s 24 reason at Answer 5 of “the user can easily add and/or remove additional 25 Appeal 2011-010508 Application 10/960,383 7 storage capacity as desired or needed” is a reason for modular memory, but 1 not for placing the tuner on the memory module. 2 The Examiner makes findings questioning whether the Appellants have 3 sufficient support for claiming a tuner on removable memory modules. Ans. 4 9. Appellants correctly respond that this support is provided at Specification 5 page 9, lines 16-21 and page 14, lines 8-9. Reply Br. 3. 6 CONCLUSIONS OF LAW 7 The rejection of claims 1, 3-11, 13-54, 56, and 57 under 35 U.S.C. 8 § 103(a) as unpatentable over Akins, Yap, and Dolphin is improper. 9 DECISION 10 The rejection of claims 1, 3-11, 13-54, 56, and 57 is reversed. 11 12 REVERSED 13 14 15 16 17 18 mls 19 Copy with citationCopy as parenthetical citation