Ex Parte Guzman et al

Patent Trial and Appeal Board

Apr 2, 2014

11603632 (P.T.A.B. Apr. 2, 2014)

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.
11/603,632 11/22/2006 Jorge H. Guzman PD-206017 2652
20991 7590 04/02/2014
THE DIRECTV GROUP, INC.
PATENT DOCKET ADMINISTRATION
CA / LA1 / A109
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
EXAMINER
MENGESHA, MULUGETA A
ART UNIT PAPER NUMBER
2424
MAIL DATE DELIVERY MODE
04/02/2014 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
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JORGE H. GUZMAN and BRIAN D. JUPIN
____________________

Appeal 2011-010569
Application 11/603,632
Technology Center 2400
____________________

Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-29. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

THE CLAIMED INVENTION
Appellants’ claimed invention relates to “a method for storing
information in a portable media player or other portable or mobile device
from a content storage device” (Spec., para. [0001]).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method comprising:
transmitting a unique identifier of a portable device to a
storage device controller of a storage device from a central
location remotely located from the storage device controller;
storing the unique identifier of the portable device in a
memory associated with the storage device controller to form a
stored identifier;
coupling the portable device to the storage device
controller;
communicating an identifier from the portable device to
the storage device controller;
comparing the identifier from the portable device with
the stored identifier in the memory; and
enabling a transfer of a content file stored in the storage
device to the portable device in response to comparing.

1 Our decision will refer to Appellants’ Appeal Brief (“App. Br.,” filed
January 31, 2011) and Reply Brief (“Reply Br.,” filed June 10, 2011), and
the Examiner’s Answer (“Ans.,” mailed April 11, 2011).
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THE REJECTIONS
The following rejections are before us for review:
Claims 1, 2, 7-10, 12, 13, 19-22, 24, 28, and 29 are rejected under
35 U.S.C. § 103(a) as unpatentable over Lee (WO 2005/004387 A1, pub.
Jan. 31, 2005) and Kubo (US 2007/0044132 A1, pub. Feb. 22, 2007).
Claims 3-5, 11, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee, Kubo, and Olivier (US 2004/0268117 A1,
pub. Dec. 30, 2004).
Claims 14-16, 25, and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee, Kubo, and Prologo (US 2006/0236097 A1,
pub. Oct. 19, 2006).
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Lee, Kubo, Olivier, and Gautier (US 6,618,858 B1, iss. Sep. 9, 2003).
Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Lee, Kubo, and Holtzman (US 2008/0034440 A1, pub. Feb. 7, 2008).
Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Lee, Kubo, Prologo, and Holtzman.
Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Lee, Kubo, Prologo, and Candelore (US 2004/0039648 A1, pub. Feb. 26,
2004)

ANALYSIS
Independent claim 1
We are not persuaded that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) by Appellants’ argument that Lee, on which the
Examiner relies, does not disclose or suggest “comparing the identifier from
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the portable device with the stored identifier in the memory,” as recited in
claim 1 (App. Br. 6-7 and Reply Br. 2-3). Instead, we agree with the
Examiner that Lee teaches this feature (Ans. 4, citing Lee, Fig. 1; p. 8, l. 25
– p. 9, l. 8; p. 15, ll. 6-14; and p. 20, ll. 15-23).
Appellants acknowledge that Lee discloses (in Fig. 1 and at p. 16,
ll. 20-24) that “a home master terminal receives authentication data for
authentication of the authentication server and the ID number of the
accessible mobile terminal through the home network service using the ID
number in the mobile service server” (App. Br. 6). But Appellants argue
that Lee does not disclose “comparing the identifier from the portable device
with the stored identifier in the memory,” as recited in claim 1, because the
comparison in Lee takes place in the mobile service server, rather than in the
home master terminal, i.e., the location where the identifier is stored (App.
Br. 6). In this regard, Appellants assert that:
Claim 1 recites that the storage device controller that receives
the unique identifier from the remote location performs the
comparing since the identifier from the portable device is
compared with the stored identifier in the memory and the
memory is associated with the storage device controller as
described in the second clause of claim 1.

(App. Br. 6). Appellants’ argument is not persuasive because it is not
commensurate with the scope of the claim. There is nothing in claim 1 that
requires the home master terminal (which the Examiner interprets, together
with the authentication server, to constitute the “storage device controller”)
to perform the comparison. Instead, claim 1 only requires that the identifier
from the portable device be compared with the stored identifier, which Lee
clearly discloses.
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As mentioned above, Appellants acknowledge that Lee discloses at
page 16, lines 20-24 that the home master terminal receives and stores
authentication data and the ID number of the mobile terminal. Lee also
discloses that “the mobile service server . . . includes a registration means
for receiving an ID number of an accessible user mobile terminal from the
home master terminal . . . and registering the ID number” (see Lee, p. 5,
ll. 15-18), and further that “the mobile service server compares the ID
number of the user mobile terminal contained in the authentication request
data with the registered ID number” (see Lee, p. 4, ll. 15-19). Stated
differently, Lee discloses that the mobile service server compares the
received ID number from the mobile terminal, i.e., the identifier from the
portable device, with the registered ID number (which is received from the
home master terminal), i.e., the stored identifier, and, thus, meets the
language of claim 1.
We also are not persuaded of Examiner error by Appellants’ further
argument that “there is no teaching or suggestion [in Kubo, which
Appellants agree enables transferring a content file in a storage device to a
portable device] for performing these steps in a storage device controller that
performs the steps described in the Lee reference” (App. Br. 7-8). Claim 1
is rejected as obvious over the combination of Kubo and Lee, not over either
one of them alone. Non-obviousness cannot be established by attacking the
references individually when the rejection is based on the teachings of a
combination of references. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
In view of the foregoing, we sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 103(a).
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Independent claim 10
We are not persuaded that the Examiner erred in rejecting claim 10
under 35 U.S.C. § 103(a) by Appellants’ argument that Lee does not disclose
“generating a conditional access signal at the central location [located
remotely from a storage device controller] corresponding to the portable
device in response to registering; [and] communicating the conditional
access signal from the central location to the storage device controller of a
storage device,” as recited in claim 10 (App. Br. 8-9 and Reply Br. 3).
Instead, we agree with, and adopt the Examiner’s findings and rationale, as
set forth at page 15 of the Answer.
Appellants acknowledge that Lee discloses that the mobile server
(which the Examiner interprets as a central location) registers the ID number
of the mobile terminal, and transmits the authentication data (which the
Examiner interprets as a conditional access signal) to the authentication
server (which the Examiner interprets as “part [of the storage] device
controller” (see Ans. 4)) (App. Br. 8-9). However, Appellants assert that
“the authentication server is not a storage device nor does it contain a
storage device controller” (Reply Br. 3). Therefore, according to
Appellants, “there is no teaching or suggestion for a conditional access
signal at a central controller corresponding to the portable device and
communicating the conditional access signal from the central location to the
storage device controller of a storage device” (App. Br. 9; see also Reply
Br. 3).
The difficulty with Appellants’ argument is that claim 10 is not
rejected based on Lee alone; instead, claim 10 is rejected as obvious over the
combination of Lee and Kubo. Kubo clearly discloses a storage device, and
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describes that a home server distributes the stored contents to a mobile
terminal based on authentication data transmitted from the home terminal to
and registered device authentication information (see, e.g., Kubo,
paras. [0006] and [0037]).
Appellants’ further argument that “there is no externally received
conditional access signal set forth in the Kubo reference” (App. Br. 9) also is
unpersuasive of Examiner error. As described above, non-obviousness
cannot be established by attacking the references individually when the
rejection is based on the teachings of a combination of references.
Merck & Co., 800 F.2d at 1097. The Examiner relies on Lee, not Kubo, as
disclosing a conditional access signal.
In view of the foregoing, we sustain the Examiner’s rejection of claim
10 under 35 U.S.C. § 103(a).
Dependent claim 12
Claim 12 depends from claim 10 and recites that “communicating the
conditional access signal comprises communicating the conditional access
signal through a terrestrial-based system.”
Appellants acknowledge that “a terrestrial-based system is implied
with the user of a private line or public line in paragraph 14 of the Kubo
reference” (App. Br. 9). But Appellants argue that “there is no teaching or
suggestion [in Kubo] for communicating a conditional access signal
therethrough” (App. Br. 9-10).
Appellants’ argument is not persuasive because, again, Appellants
attack the references individually when the rejection of claim 12 is based on
the teaching of a combination of Lee and Kubo.
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Therefore, we sustain the Examiner’s rejection of claim 12 under
35 U.S.C. § 103(a).
Dependent claim 17
Claim 17 depends from claim 10 and recites that “the conditional
access signal comprises a revocation list.”
Appellants argue that the Examiner erred in rejecting claim 17 under
35 U.S.C. § 103(a) because although “[t]he Holtzman reference does teach a
certificate revocation list in paragraph 291,” there is “no teaching or
suggestion for providing a revocation list with a conditional access signal as
set forth in claim 17.” (App. Br. 11; see also Reply Br. 3-4). Yet that
argument is not persuasive because Appellants attack the references
individually when the rejection of claim 17 is based on the combined
teachings of Lee, Kubo, and Holtzman.
Therefore, we sustain the Examiner’s rejection of claim 17 under
35 U.S.C. § 103(a).
Dependent claim 18
Claim 18 depends from claim 10 and recites that “the conditional
access signal comprises a seed signal, a serial number signal corresponding
to a serial number and a revocation list, and wherein communicating files to
the portable device is performed in response to the serial number not on the
revocation list.”
Appellants argue that the Examiner erred in rejecting claim 18 under
35 U.S.C. § 103(a) because “[t]he Holtzman reference does not teach a
conditional access signal having a seed signal, a serial number signal and a
revocation list” and further because “there is no teaching or suggestion for
communicating files when a serial number is not on the revocation list”
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(App. Br. 11). Appellants also maintain that “there is no teaching or
suggestion that a revocation list is provided within the Lee reference” and
that “[n]one of the cited references teaches communicating files to a portable
device when the serial number is not on a revocation list” (Reply Br. 4).
None of Appellants’ arguments is persuasive. The rejection of
claim 18 is based on the combined teachings of Lee, Kubo, Prologo, and
Holtzman. Therefore, non-obviousness may not be established by attacking
the references individually. Merck & Co., 800 F.2d at 1097. The Examiner
also relies on Prologo, not Holtzman, as disclosing a conditional access
signal having a seed signal and a serial number signal.
Appellants have not established that the Examiner erred in rejecting
claim 18 under 35 U.S.C. § 103(a). Therefore, we sustain the Examiner’s
rejection.
Claims 2-9, 11, 13-16, and 19-29
Appellants do not present arguments for the patentability of any of
claims 2-9, 11, 13-16, and 19-29. Instead, Appellants indicate that each of
these claims stands or falls with another of these claims or with one of
claims 1, 10, and 12, the rejection of each of which is sustained (see App.
Br. 8 and 10-12).
Therefore, we sustain the rejections of claims 2-9, 11, 13-16, and
19-29 under 35 U.S.C. § 103(a).

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DECISION
The Examiner’s rejections of claims 1-29 under 35 U.S.C. § 103(a)
are affirmed.
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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