Ex Parte Hatanaka et al

Board of Patent Appeals and Interferences

Nov 5, 2007

10069113 (B.P.A.I. Nov. 5, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte MASAYUKI HATANAKA, JUN KAMADA, TAKAHISA
HATAKEYAMA, TAKAYUKI HASABE, SEIGOU KOTANI, TADAAKI
TONEGAWA, TAKEAKI ANAZAWA, TOSHIAKI HIOKI, MIWA
KANAMORI, and YOSHIHIRO HORI
_____________

Appeal 2007-2340
Application 10/069,113
Technology Center 2100
______________

Decided: November 5, 2007
_______________

Before JAMES D. THOMAS, KENNETH W. HAIRSTON, and ROBERT
E. NAPPI, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 6(b) (2002) of the final
rejection of claims 1 through 18.
We reverse the Examiner’s rejections of these claims.

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Application 10/069,113

INVENTION

The invention is directed to a recording device which functions as a
medium for recording data and functions to prevent unauthorized
reproduction, transfer or erasing of the data stored thereon. See page 2 of
Appellants’ Specification. Claim 1 is representative of the invention and
reproduced below:
1. A recording device detachably attachable to a reproduction
apparatus reproducing and outputting encrypted content data, for
receiving and recording said encrypted content data therein,
comprising:
a data input/output unit allowing external data communication;
a first storage unit receiving said encrypted content data from
said data input/ output unit for storage;
a user information hold unit holding first user ID data provided
to identify a user of said recording device;
a protection information memory unit holding protection
information updatable in response to a result of comparing externally
provided user information with said first user ID data, as externally
instructed; and
a control unit controlling an operation of said recording device,
said control unit referring to said protection information to restrict
external access to said encrypted content data held in said first storage
unit.

REFERENCES

Lang US 5,191,611 Mar. 2, 1993

Hasebe US 5,392,351 Feb. 21, 1995

Shear US 2001/0042043 A1 Nov. 15, 2001

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REJECTIONS AT ISSUE
Claims 1 through 5 and 13 through 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hasebe in view of Lang.
Claims 6 through 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hasebe in view of Lang and Shear.
Throughout the opinion, we make reference to the Brief (received
August 18, 2006), Reply Brief (received January 5, 2007) and the Answer
(mailed November 7, 2006) for the respective details thereof.
ISSUES
Appellants contend that the Examiner’s rejection of claims 1 through
5 and 13 through 18 under 35 U.S.C. § 103(a) is in error. Appellants present
several arguments directed to the combination of Hasebe and Lang on pages
7 through 15 of the Brief. Most notably, Appellants argue that the
combination of Hasebe and Lang do not teach that the protection
information is updatable in response to the result of comparing externally
provided user information with the user identification in the user
identification hold unit, as recited in claim 1. (Br. 12 and 13).
The Examiner responds in the Answer, stating:
Appelant [sic, Appellant] has further argued that Lang does not disclose
that protection information is updatable in response to a result of
comparing externally provided user information with the first user ID
data, as edxternally [sic, externally] provided because in the [L]ang the
information provider gives the user an updated access code whereas in
the claimed invention the user controls the protection of information on
the recording device. This feature, again, is not recited in the rejected
claims.
(Answer, 11, 12).

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Application 10/069,113

In the statement of the rejection, on pages 3 and 4 of the Final Rejection
dated January 25, 2006, the Examiner states:
Hasebe does not disclose the protection information updatable
in response to a result of comparing externally provided user
information with said first user ID data.
However, Lang teaches a method to distribute content to
different recipients (Lang: Abstract) where he teaches comparing
stored users information with the user information supplied by a
personal access device (PAD) to authorize the updating of user
information upon successful authorization (Lang: Col 12 lines 36-58).

Thus, the contentions of the Appellants present us with two issues.
First whether claim 1 recites that the protection information is updatable in
response to the result of comparing externally provided user information
with the user identification in the user identification hold unit. Second,
whether the combination of the art applied by the Examiner teaches or
suggests this feature.
FINDINGS OF FACT
1. Hasebe teaches a system to protect electronic data, stored on a
medium, from illegal copying. (Abstract).
2. Hasebe teaches that the Electronic data is stored on the medium in
an encrypted form. The medium also stores the electronic data key
which only decrypts the data permitted by the vendor (permission
information.) This data key is also encrypted. (Col. 1, l. 62 – col.
2, l. 5, see also figures 1 and 2).
3. Hasebe teaches that the prior art systems operate such that a
personal key is generated by the user’s computer based upon the
user’s personal number. This personal number is also transmitted
to the data vendor’s computer to generate a personal key. The
Vendor’s computer then uses this key to encrypt the software
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decrypting key which is then sent to the user’s computer. The
decryption key received by the user’s computer is then used in
conjunction with the permission information to decrypt the
electronic data on the medium. (Col. 3, ll. 35-55).
4. Hasebe teaches an improvement to the prior art. Instead of using a
personal number, associated with the user or user’s computer, to
generate the personal key, a medium number, stored on the
medium is used. (Col. 4, ll. 9-20).
5. We find no teaching in Hasebe of comparing the user or medium
number to externally input information to make any adjustments to
the permitted decryption of the data.
6. Lang teaches a system for granting privileges for securely
retrieving data from databases. (Abstract).
7. Lang’s system may also be applied to information on storage
medium. (Col. 2, ll. 25-42).
8. Lang’s system makes use of a storage accessing device, a smart
card which contains a personal ID code and a personal key. (Col.
2, ll. 42-48).
9. The storage medium contains the data in different zones. Different
levels of user access are determined by the zone of the data. Zone
Access Codes (ZAC) are assigned to each zone of data. The
storage medium stores the ZAC along with identification codes
assigned a Personal Unique Key (PSK). (Lang, col. 2, l. 59- col. 3,
l. 10).
10. When a user accesses data, using Lang’s system, they first enter
their personal ID code into the smart card. The smart card then
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displays the ZAC and system identification code, which the user
enters into a storage computer. The computer system compares the
input codes to the codes on the storage medium. If there is a
match, the computer retrieves the personal security key and
generates a random number which is displayed on the screen. The
user inputs the random number into the smart card which uses the
input random number and an encryption algorithm to generate a
value displayed on the smart card display. The user then inputs the
value displayed on the smart card into the computer. The
computer compares the input value with a value calculated using
the random number and similar encryption algorithm. If there is a
match the user is granted access to the data. (Lang col. 3, ll. 20-
51).
11. Lang also teaches that this system can be used for remote
metering by programming the smart card to provide a limited
number of retrievals of the data. In such an application, the user
can contact the data provider to obtain an update code which
modifies the permissions to allow a user to obtain further access to
the data. (Col. 12, ll. 36-59).
12. We find no discussion in Lang about the permissions (protection
data) to allow the user to access the data being changed based upon
a comparison of external input with an ID value stored on the
medium.
ANALYSIS
The first issue we consider is whether claim 1 recites that that the
protection information is updatable in response to a result of comparing
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externally provided user information with the user identification in the user
identification hold unit. Claim 1 recites, “a protection information memory
unit holding protection information updatable in response to a result of
comparing externally provided user information with said first user ID data,
as externally instructed.” Claim 1 further recites that the control unit refers
to the protection information to restrict access to the encrypted data. Thus,
the “protection information” is functionally related to the device as it is
referred to in restricting access to data. Claim 1 additionally identifies that,
based upon a comparison of externally provided user information with the
user ID stored in the user information holding unit, the protection
information is updatable. Thus, contrary to the statements by the Examiner
on pages 11 and 12 of the Answer, we consider the scope of independent
claim 1 to include that protection information is updatable in response to a
result of comparing externally provided user information with the user
identification in the user identification hold unit.
The second issue we consider is whether the combination of the art
applied by the Examiner teaches or suggests this limitation. As discussed
above we find that both Lang and Hasebe teach systems for restricting
access to electronic data stored on a medium. (Facts 1 and 7). Lang teaches
comparing externally input values with values presorted on the medium.
(Fact 10). While Lang does teach that the information used to access the
medium can be changed (i.e. renew privileges), we do not find that Lang
teaches that such changes are updated based upon the comparison of external
values with stored values. (Facts 11 and 12). Thus, we do not find that the
combination of Lang and Hasebe teaches the limitations of independent
claim 1 and we reverse the Examiner’s rejection.
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Claims 2 through 5 and 13 through 18 are ultimately dependent on
claim 1 and similarly are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hasebe in view of Lang. Thus, we reverse the Examiner’s
rejection of these claims for the same reasons as discussed with respect to
claim 1.
The Examiner’s rejection of dependent claims 6 through 12 relies
upon Lang to teach modifying Hasebe’s system. We do not find that the
Examiner’s additional reliance upon Shear remedies the deficiencies noted
in the rejection of claim 1. Accordingly, we will not sustain the Examiner’s
rejection of claims 6 through 12 under 35 U.S.C. § 103(a).

CONCLUSION
We consider the Examiner’s rejections of claims 1 through 18 through
under 35 U.S.C. § 103(a) to be in error as we do not find that the
combination of applied references teaches or suggests the limitations in
independent claim 1and it’s dependents.
ORDER
For the foregoing reasons, we will not sustain the Examiner’s
rejections under 35 U.S.C. § 103. The decision of the Examiner is reversed.

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Application 10/069,113

REVERSED

eld

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