09947547 (B.P.A.I. Jun. 13, 2011)

Ex Parte Hori

Board of Patent Appeals and InterferencesJun 13, 2011

09947547 (B.P.A.I. Jun. 13, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE _____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _____________ Ex parte YOSHIHIRO HORI _____________ Appeal 2009-011082 Application 09/947,547 Technology Center 2400 ______________ Before ROBERT E. NAPPI, MARC S. HOFF, and ELENI MANTIS MERCADER, Administrative Patent Judges. NAPPI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-011082 Application 09/947,547 2 This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection of claims 1 through 10. We affirm. INVENTION The invention is directed a data recording device which also records a license. See Specification 4-5. Claim 1 is representative of the invention and reproduced below: 1. A data recording device for recording a license, which includes a license key for decrypting encrypted data, and data specifying information for specifying said encrypted data at least, said data recording device comprising: a license storing unit subjected to tamper resistant processing disabling direct external access and storing the license; a bus; an interface for external transmission and incoming transmission; and a control unit, wherein said control unit obtains said data specifying information and a request for retrieving the license input via said interface, retrieves the license stored in said license storing unit based on said data specifying information, reads out the license including said data specifying information from said license storing unit via said bus, selects unconfidential information with the exception of said license key out of the read license, and externally outputs said selected information from said data recording device via said interface, wherein said selected unconfidential information includes reproduction control information for restricting reproduction of content data. REFERENCE Downs US 6,226,618 B1 May 1, 2001 Appeal 2009-011082 Application 09/947,547 3 REJECTION AT ISSUE The Examiner has rejected claims 1 through 10 under 35 U.S.C. § 102(e) as being anticipated by Downs. Answer 2-7. 1 ISSUES Appellant argues on pages 6 through 13 of the Brief 2 that the Examiner’s rejection of claim 1 is in error. These arguments present us with the following issue: did the Examiner err in finding that Downs teaches exporting usage conditions from the end user device? Appellant argues on pages 13 and 14 of the Brief that the Examiner’s rejection of independent claim 2 is in error. Appellant presents similar arguments on pages 14 and 18 of the Brief directed to the Examiner’s rejection of independent claim 5. Appellant’s contentions directed to these claims present the same issues as with claim 1. ANALYSIS We have reviewed the Examiners’ rejection in light of Appellant’s arguments that the Examiner has erred. We disagree with Appellant’s conclusion that the Examiner erred in finding that Downs teaches exporting usage conditions from the end user device. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this 1 Throughout this opinion we refer to the Examiner’s Answer mailed on December 16, 2008. 2 Throughout this opinion we refer to the Appeal Brief dated September 25, 2008 and Reply Brief dated February 12, 2009. Appeal 2009-011082 Application 09/947,547 4 appeal is taken and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief. We concur with the conclusion reached by the Examiner. Appellant’s arguments present two lines of reasoning as to why Downs does not teach exporting the usage conditions from the user device. On pages 9 and 10 of the Brief, Appellant’s arguments assert that Downs does not teach exporting the license. We are not persuaded by this argument, as we find ample evidence to support the Examiner’s finding that the end user device of Downs (item 109, Figure 6) sends the license (item 660, Figure 6, and Figure 10) to the content hosting site (item 111, Figures 6 and 10). Answer 7; see also col. 69, ll. 40-44 and col. 81, ll. 54-56, of Downs. Appellant further reasons, on pages 11 and 12 of the Brief, that even if the license is sent to the hosting site it does not contain the usage conditions. Appellant asserts that since the usage conditions are sent to the clearing house as part of the order for the media, there is no reason to send them to the clearing house. Brief 11-12, Reply Brief 6-7. We are not persuaded by this argument, as it is based upon speculation. Further, the Examiner has found that the license includes the usage, and since the license is sent to the Appeal 2009-011082 Application 09/947,547 5 hosting site, the usage conditions are exported from the user device. Answer 7 and 8. 3 There is ample evidence to support this finding by the Examiner, as the license contains transaction data which includes the usage conditions. See for example col. 24, ll. 37-39, col. 76, ll. 59-60. Accordingly, Appellant’s arguments have not persuaded us of error in Examiner’s finding that Downs teaches exporting usage conditions from the user end device. We note that Appellant presented an additional argument on pages 7 and 8 of the Reply Brief, that Downs does not teach selecting information with the exception of said license key. This argument is deemed waived. 4 Appellant has not explained why, nor is it apparent that, this argument was necessitated by a new point in the Answer or any other circumstance constituting “good cause” for its belated presentation. See Ex parte Borden, 3 We further note that the limitation directed to “reproduction control information” which the Examiner and the Appellant are referring to as usage conditions is a description of the information outputted. As the independent claims do not recite a function associated with the information, it is non- functional descriptive material. As such, even if there were a difference between the information claimed as externally output from the control unit and the information taught being externally output by Downs, such difference in the information would not differentiate the claim from the art. The Examiner need not give patentable weight to descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004) and our recent final decision in Ex parte Curry, 2005-0509 (BPAI 2005), 84 USPQ2d 1272 (Affirmed, Rule 36, Fed. Cir., slip op. 06-1003, June 2006). 4 We also note that this argument only addresses the Symmetric Key and does not address the Private Key and SEAL key, discussed in col. 82, both of which are used in encrypting and decrypting data in the user device 109. Appeal 2009-011082 Application 09/947,547 6 93 USPQ2d 1473, 1473-74 (BPAI 2010) (“informative”5) (absent a showing of good cause, the Board is not required to address argument in Reply Brief that could have been presented in the principal Brief). For the aforementioned reasons, Appellant’s arguments directed to independent claim 1 have not persuaded us of error in the Examiner’s anticipation rejection of claims 1 and 6. Further, as Appellant’s arguments directed to independent claims 2 and 5 present us with the same issues, we are similarly not persuaded of error in the Examiner’s rejection of claims 2 through 5 and 7 through 10. ORDER The decision of the Examiner to reject claims 1 through 10 is 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 ELD 5 The “informative” status of this opinion is noted at the following Board website: http://www.uspto.gov/ip/boards/bpai/decisions/inform/index.jsp.