Ex Parte Hirai et al

Patent Trial and Appeal Board

Apr 9, 2014

11541463 (P.T.A.B. Apr. 9, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TATSUYA HIRAI
and HARUKO TAKANO
____________________

Appeal 2011-013297
Application 11/541,463
Technology Center 2400
____________________

Before JOSEPH F. RUGGIERO, STANLEY M. WEINBERG, and
JOHNNY A. KUMAR, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-013297
Application 11/541,463

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STATEMENT OF CASE
Introduction
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (“App. Br.”) filed March 28, 2011, the Answer
(“Ans.”) mailed June 21, 2011, and the Reply Brief (“Reply Br.”) filed
August 19, 2011, for the respective details. We have considered in this
decision only those arguments Appellants actually raised in the Briefs. Any
other arguments which Appellants could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Exemplary Claim
Exemplary claim 1 under appeal reads as follows:
1. A transfer processing method for transferring, in addition
to key data for decryption of encrypted content data, required
information inclusive of conditions for using the content data,
from one device to another device, the transfer processing
method comprising:
selecting one of a plurality of predetermined transfer
processing modes provided to conduct data transfer between
both of the two devices, the plurality of predetermined transfer
processing modes comprise:
a first transfer mode that is adapted to
unidirectionally transfer the required information from
the one of the two devices to the other device; and
a second transfer mode under which bidirectional
transfer of the required information between the two
devices is possible, wherein a first device and a second
device of the two devices is a security manager and a
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removable storage device, respectively, and the first
device and the second device always operate as a primal
device and an inceptive device, respectively, wherein
decryption control information is information for
decrypting the content data and wherein the security
manager is configured for controlling communication of
the decryption control information and recording and
reading out data, thereby enabling the required
information to always be transferred in both directions
while in the second transfer mode, and either one of the
devices that has received the required information in
accordance with a transfer mode selected from the first
and second transfer modes decrypts the required
information with the symmetric key data, and decrypts
the content data that has been received with the required
information that has been decrypted,
wherein the selecting one of the plurality of
predetermined transfer processing modes comprises:
determining if the one of the two devices has
either the function of executing the transfer of the
required information in the first transfer mode, the
second transfer mode, or both the first and second
transfer modes, the determining comprising:
sending an instruction to a first device of the
two devices, thereby providing notification of a
potential transfer of the required information to the
first device; and
receiving a response by the first device, the
response giving notification as to whether the first
device has either the function of executing the
transfer of the required information in the first
transfer mode, the second transfer mode, or both
the first and the second transfer mode;
determining if the other of the two devices,
the second device, has either the function for
executing the transfer of the required information
in the first transfer mode, the second transfer
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mode, or both the first and the second transfer
modes, the determining comprising:
sending the instruction to the second device;
and
receiving a response by the second device as
to whether the second device has either the
function for executing the transfer of the required
information in the first transfer mode, the second
transfer mode, or both the first and the second
transfer modes;
transmitting to the first device and the second device a
first open channel instruction and a second open channel
instruction, respectively, the open channel instructions
configured for setting up the selected modes; as a first data set
that comprises a first channel identifier configured for
identifying the kind of qualified access mode to be used to
execute the transfer of the required information; and as a second
data set that comprises a second channel identifier configured
for making multiple transfer processes separable when the
multiple transfer processes are to be executed in a
simultaneous/parallel fashion;
identifying the first and the second channel identifiers;
conducting mutual authentication between the two
devices;
encrypting the required information with the one of the
two devices with symmetric key data obtained during the
authentication; and
transferring the required information that has been
encrypted with the one of the two devices, to the other device in
accordance with the selected transfer processing mode, wherein
the transferring is conducted only under identified first and
second channel identifiers.
Appeal 2011-013297
Application 11/541,463

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Rejections on Appeal1
The Examiner rejected claims 18-20 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.2 Ans. 4-5.
The Examiner rejected claims 1-3, 5-15, and 17-19 under 35 U.S.C.
§ 103(a) as being unpatentable over Kitani (US 2005/0198529 A1, Sep. 8,
2005) and Walker (US 7,061,899 B2, Jun. 13, 2006). Ans. 5-16.
The Examiner rejected claims 4, 16, and 20 under 35 U.S.C. § 103(a)
as being unpatentable over Kitani, Walker, and Ashley (US 2005/0154889
A1, Jul. 14, 2005). Ans. 16-23.
Appellants’ Contentions
1. Appellants contend the Examiner erred in rejecting claim 1
because “Kitani’s ‘channel types’ are different in function than those of
Appellants’.” App. Br. 18; Reply Br. 2-3.
2. Appellants also contend the Examiner erred in rejecting claim 1
because “the content of column 2, lines 51-55 of Walker reference
‘bidirectional’ in a different manner using a different process and different
structural elements than that of Appellants’ Claim 1.” App. Br. 19; Reply
Br. 4-6. In addition, Appellants contend, “Claim 1 enables an authentication
process and that the transfer direction of the key and the usage terms may be
run in a reverse direction without restarting the authentication process from
the beginning.” App. Br. 19.

1 Separate patentability is not argued for claims 2, 3, 5-15, and 17-19.
Except for our ultimate decision, these claims are not discussed further
herein.
2 We pro forma affirm the § 101 rejection of claims 18-20, which was not
contested by Appellants.
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3. Appellants contend the Examiner erred in rejecting dependent
claims 4, 16, and 20 because “the features recited as not taught by Kitani in
view of Walker include over 30 lines of features and limitations.” App. Br.
22; Reply Br. 6.
Issue on Appeal
Did the Examiner err in rejecting claims 1-20 as obvious because the
cited references fail to teach or suggest the claimed limitations?

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred. We disagree with Appellants’
conclusions. We agree with (1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken and (2) the reasons
set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief. We concur with the conclusions reached by the
Examiner.
We begin our analysis by observing that Appellants respond to the
Examiner’s final rejection of claims 1-20 by merely reciting the language
identified in the claims and asserting that the aforementioned limitations are
not disclosed in Kitani, Walker, and Ashley. See App. Br. 18-22; Reply Br.
2-7. In addition, we find Appellants have failed to traverse the specific
factual findings the Examiner has set forth in the rejection of claims 1-20.
See Ans. 5-29.
We note that Appellant’s arguments amount to no more than reciting
the claim features and generally alleging that Kitani, Walker, and Ashley are
deficient. Merely pointing out certain claim features recited in the claims
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and asserting that Kitani and Walker fail to disclose such features does not
amount to a separate patentability argument. See Ex parte Belinne, No.
2009-004693, 2009 WL 2477843 at *3-4 (BPAI Aug. 10, 2009)
(informative); see also 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”).
On this record, we find Appellants have failed to present substantive
arguments and supporting evidence persuasive of Examiner error in
contentions 1 to 3.
With regard to Appellants’ contention 2, we further find that
Appellants’ argument is not commensurate with the scope of the claims
because the claims do not recite “the authentication process may run in the
reverse direction without restarting it from the beginning.” See Ans. 27.

CONCLUSIONS
The Examiner did not err in rejecting claims 18-20 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
The Examiner did not err in rejecting claims 1-3, 5-15, and 17-19
under 35 U.S.C. § 103(a) as being unpatentable over Kitani and Walker.
The Examiner did not err in rejecting claims 4, 16, and 20 under
35 U.S.C. § 103(a) as being unpatentable over Kitani, Walker, and Ashley.

Appeal 2011-013297
Application 11/541,463

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DECISION
The Examiner’s rejections of claims 1-20 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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