10525138 (P.T.A.B. Feb. 10, 2014)

Ex Parte He et al

Patent Trial and Appeal BoardFeb 10, 2014

10525138 (P.T.A.B. Feb. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte DARWIN HE, DECLAN PATRICK KELLY, BEI WANG, and YANG PENG1 ________________ Appeal 2011-006162 Application 10/525,138 Technology Center 2400 ________________ Before ALLEN R. MACDONALD, JASON V. MORGAN, and MICHAEL J. STRAUSS, Administrative Patent Judges. MORGAN, Administrative Patent Judge. DECISION ON APPEAL Introduction This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 2, 4-6, 8-15, 18, and 20-25. Claims 3, 7, 16, 17, and 19 are canceled. App. Br. 4. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Koninklijke Philips Electronics N.V. is the Real Party in Interest. App. Br. 2. Appeal 2011-006162 Application 10/525,138 2 Invention Appellants invented a method “which enables authenticating a data carrier inserted in a recording and/or reproducing device, in order to send additional data only to authenticated data carriers.” Spec. 1, ll. 25-27. Possible data carriers include, for example, DVDs (digital video disks or digital versatile discs), CDs (compact discs), and Blu-ray discs. Id. at 3, ll. 20-23. The method of authenticating the data carrier includes extracting properties from the data carrier and comparing the properties “with the ones of a corresponding data carrier legally produced by a provider.” Id. at 1, l. 30-2, l. 3. The data carrier properties can include region management information in the form of a region code. Id. at 4, l. 17. Exemplary Claims Claim 1, reproduced below with disputed limitations emphasized, is representative: 1. A communication method via a network between a device able to read a memory medium, and a remote unit comprising additional data for the memory medium, said communication method comprising the acts of: extracting memory medium properties from the memory medium inserted in the device, sending said memory medium properties to the remote unit, authenticating the memory medium by comparing said memory medium properties with corresponding properties of a corresponding memory medium legally produced by a provider, before sending the additional data to the device, and determining that the memory medium is illegally produced when the memory medium properties are different from the corresponding properties even if the memory medium Appeal 2011-006162 Application 10/525,138 3 includes identical content for rendering as the corresponding memory medium, wherein the memory medium properties include a region code of the memory medium. Rejection The Examiner rejects claims 1, 2, 4-6, 8-15, and 20-25 under 35 U.S.C. § 103(a) as being unpatentable over Schwartz et al. (WO 01/90860 A2, published November 29, 2001) and Collart (U.S. 6,405,203 B1, issued Jun. 11, 2002). Ans. 4-13. The Examiner rejects claim 18 under 35 U.S.C. § 103(a) as being unpatentable over Schwartz, Collart, and Valente et al. (U.S. 2003/0110192 A1, published Jun. 12, 2003). Ans. 13-14. ISSUE Did the Examiner err in finding that the combination of Schwartz and Collart teaches or suggests “authenticating the memory medium by comparing said memory medium properties with corresponding properties of a corresponding memory medium legally produced by a provider . . . wherein the memory medium properties include a region code of the memory medium,” as recited in claim 1? ANALYSIS The Examiner finds that Schwartz teaches authenticating an audio CD by comparing an identifier associated with a recording medium with an identifier known to be authentic. Ans. 4. Schwartz authorizes the transmission of additional data to the user upon authentication. Id. (citing Schwartz, Abstract.) The Examiner finds that while Schwartz may not explicitly disclose a region code identifier, Collart teaches the use of a Appeal 2011-006162 Application 10/525,138 4 region code to identify and track memory media. Ans. 15 (citing Collart, col. 19, ll. 20-25.) Appellants argue that Collart’s use of the region code to localize pirated discs to a specific region “does not disclose or suggest using the region code to authenticate the memory medium.” App. Br. 14-15. Appellants’ argument, however, unpersuasively attacks Collart individually even though the Examiner rejects claim 1 based on the combined teachings and suggestions of Schwartz and Collart. Specifically, the Examiner correctly relies on Schwartz, not Collart, to teach or suggest authenticating a memory medium using an identifier coded on the memory medium. Ans. 4. The Examiner also correctly relies on Collart to teach or suggest that regional codes were a type of identifier known in the art at the time of the invention. Id. at 4-5. The use of a Collart’s regional code in the authentication method of Schwartz represents nothing more than the mere combination of familiar elements according to known methods to yield predictable results. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007). Therefore, we agree with the Examiner that the combination of Schwartz and Collart teaches or suggests “authenticating the memory medium by comparing said memory medium properties with corresponding properties of a corresponding memory medium legally produced by a provider . . . wherein the memory medium properties include a region code of the memory medium,” as recited in claim 1. 2 Ans. 4-5. 2 We further note Appellants’ “region code” stored in memory does not patentably distinguish Schwartz because the type of information represented by the code in the claimed “comparing” does not limit the structure or function of the invention. Therefore, Appellants’ “region code” is non- Appeal 2011-006162 Application 10/525,138 5 Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of claim 1, and of claims 2, 4-6, 8-15, 18, and 20-25, which are not argued separately. App. Br. 12 and 15-16. DECISION We affirm the Examiner’s decision to reject claims 1, 2, 4-6, 8-15, and 20-25. 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 cdc functional descriptive material. Non-functional descriptive material “does not lend patentability to an otherwise unpatentable computer-implemented product or process.” Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential). See Ex parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative) (Fed. Cir. Appeal No. 2006-1003), aff’d, (Rule 36) (June 12, 2006) (“wellness-related” data in databases and communicated on a distributed network did not functionally change either the data storage system or the communication system used in the claimed method). See also In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004); Nehls, 88 USPQ2d at 1887-90 (discussing non-functional descriptive material).