Ex Parte Hori et al

Board of Patent Appeals and Interferences

Sep 27, 2010

10148178 (B.P.A.I. Sep. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P 0 Box 1450
Alexandria, Virginia 22313- 1450
www uspto go"
38834 7590 09/29/20 10
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
1250 CONNECTICUT AVENUE, NW
SUITE 700
WASHINGTON. DC 20036
APPLICATION NO.
I EXAMINER I
AUGUSTIN, EVENS J
101148,178 06/04/2002 Yoshihiro Hori 0207 12 5531
FILING DATE
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
ATTORNEY DOCKET NO.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
CONFIRMATION NO.
09/29/2010 ELECTRONIC
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte YOSHIHIRO HORI, TOSHIAKI HIOKI,
MIWA KANAMORI, MASATAKA TAKAHASHI,
TAKAYUKI HASEBE, MAKOTO YOSHIOKA,
TAKAHISA HATAKEYAMA, TADAAKI TONEGAWA, and
TAKEAKI ANAZAWA
Appeal 2009-006828
Application 101148,178
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and JOSEPH
A. FISCHETTI, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-006828
Application 101148,178
STATEMENT OF THE CASE
Yoshihiro Hori, Toshiaki Hioki, Miwa Kanamori, Masataka Takahashi,
Takayuki Hasebe, Makoto Yoshioka, Takahisa Hatakeyama, Tadaaki
Tonegawa, and Takeaki Anazawa (Appellants) seek review under 35 U.S.C.
5 134 (2002) of a final rejection of claims 37-72 and 75, the only claims
pending in the application on appeal.
We have jurisdiction over the appeal pursuant to 35 U.S.C. 5 6(b)
(2002).
We AFFIRM-IN-PART.
THE INVENTION
The Appellants invented data distributions systems capable of protecting
the copyright of copied information and memory cards for use in the
systems. Specification 1 :6-9.
An understanding of the invention can be derived from a reading of
exemplary claims 32 and 60, which are reproduced below [bracketed matter
and some paragraphing added].
37. A data distribution system comprising:
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed January 4, 2007) and Reply Brief ("Reply Br.," filed July 27,
2007), and the Examiner's Answer ("Ans.," mailed May 30, 2007), and
Final Rejection ("Final Rej .," mailed June 24, 2005).
Appeal 2009-006828
Application 101148,178
[I] a data provision device provided to distribute a license
key serving as a decryption key decrypting encrypted content
data to obtain plaintext content data; and
[2] a plurality of terminals receiving the distribution from
said data provision device, wherein:
[3] said data provision device includes,
[a] a first interface unit provided to communicate data
externally, and
[b] a distribution control unit operative, when said
distribution is requested, to exert control for generating
access restriction information and distributing
reproduction information at least including said license
key and said access restriction information via said first
interface unit;
[4] each said terminal includes
[a] a second interface unit provided to communicate
data externally,
[b] a distributed-data deciphering device recording
said reproduction information and said access restriction
information received from said data provision device via
said second interface unit, and
[5] a terminal control unit provided for controlling an
operation of said terminal; and
[6] said deciphering device has a storage unit provided to
record said reproduction information and said access restriction
information therein, and
[7] a control unit operative, when said terminal control unit
issues a request to output said reproduction information
recorded in said storage unit, to refer to said access restriction
information in said storage unit to determine whether said
reproduction information may be output, when said control unit
determines that said reproduction information may be output
said reproduction information being output and thereafter as
required said control unit changing said access restriction
information recorded in said storage unit,
Appeal 2009-006828
Application 101148,178
[8] wherein said access restriction information is indicative
of an allowed frequency of output of said reproduction
information.
60. A recording device, comprising:
[I] an interface unit for externally communicating data;
[2] a storage unit for storing therein data storage and access
restriction information received through said interface unit, said
access restriction information being used to control outputting
said data storage from said recording device;
[3] an authentication data hold unit holding a first public
encryption key determined to correspond to said recording
device and encrypted in a state decryptable with an
authentication key, for external output via said interface unit
when said data storage and said access restriction information
are received;
[4] a first key hold unit holding a first private decryption key
provided to decrypt data encrypted with said first public
encryption key;
[5] a first decryption unit receiving externally via said
interface unit a first symmetric key encrypted with said first
public encryption key, and decrypting said first symmetric key;
[6] a second key hold unit holding a second public
encryption key different for each said recording device;
[7] a session key generation unit producing a second
symmetric key updated whenever said data storage is
communicated;
[8] a first encryption unit encrypting said second symmetric
key and said second public encryption key with said first
symmetric key for output externally via said interface unit;
[9] a second decryption unit receiving said data storage and
access restriction information input via said interface unit, for
decryption with said second symmetric key, said data storage
and access restriction information being encrypted with said
second symmetric key and said second public encryption key;
Appeal 2009-006828
Application 101148,178
[lo] a third key hold unit holding a second private decryption
key provided to decrypt data encrypted with said second public
encryption key;
[ l 11 a third decryption unit using said second private
decryption key to decrypt said data storage and access
restriction information encrypted;
[12] a control unit operative, when an external instruction is
issued to output said data storage recorded in said storage unit,
to refer to said access restriction information in said storage
unit to determine whether reproduction information for said
data storage may be output, wherein said storage unit records
therein said data storage in one of a state encrypted with said
second public encryption key and a state decrypted by said third
decryption unit, and when said control unit determines that said
data storage may be output said data storage is output and
thereafter as required said control unit changes said access
restriction information recorded in said storage unit.
THE REJECTIONS
The Examiner relies upon the following prior art:
Ginter et al. US 5,892,900 Apr. 6, 1999
Katsumata EP 0 996 074 A1 Apr. 26,2000
Claims 37-72 and 75 stand rejected under 35 U.S.C. 5 103(a) as
unpatentable over Katsumata and Ginter.
ISSUES
The issue of whether the Examiner erred in rejecting claims 37-72 and
75 under 35 U.S.C. 5 103(a) as unpatentable over Katsumata and Ginter
turns on whether Katsumata and Ginter describe limitation [7] of claims 37
and 60 and whether there is a motivation to combine Katsumata and Ginter.
Appeal 2009-006828
Application 101148,178
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Katsurnata
01. Katsumata is directed to an information distribution system.
Katsumata 15-6. A contents server is connected to a user
machine through a transmission path. Katsumata 7:s-9. A
contents database provides contents to the contents server.
Katsumata 7: 15-17. A code and key database is provided for the
content server and user machines are equipped with peculiar MID
(Machine Identification) codes and M, C, and T keys, which are
enciphering keys. Katsumata 65-44,7:3-7, and 7:3 1-36. Data is
enciphered by the M, C, and T keys, which correspond to a MID
code. Katsumata 12:39-46 and 155-10. A code, called a DA
code, that dynamically changes with the elapse of time can be
added to the C key. Katsumata 22:45-49. A determination as to
whether a predetermined period of time has elapsed thereby
expiring an enciphering key is also performed. Katsumata 24:21-
40.
02. When a distribution request for the contents is received by a
machine processing manager, a card consisting of balance
information is loaded. Katsumata 9: 13- 15. The system generates
a drawing instruction or reducing instruction to the card and the
cost corresponding to the distribution of the contents is deducted
Appeal 2009-006828
Application 101148,178
from the card. Katsumata 9: 17-22. A determination is made as to
whether a user is a legal user before outputting the correct
corresponding M key and MID code. Katsumata 9:24-29.
Ginter
03. Ginter is directed to systems and techniques for secure
transaction management. Ginter 1 :9- 10. Ginter is concerned with
the protection of rights of citizens and organizations who use the
information highway. Ginter 1 :47-50.
04. Ginter describes a virtual distribution environment (VDE) that
secures, administers, and audits electronic information use. Ginter
2:20-23. The VDE allows for the control of information such that
specific parties can receive several copies of content whereas
other specified parties may only receive a single copy. Ginter
48:4-33.
ANALYSIS
Claims 37-72 and 75 rejected under 35 U.S. C. § 103(a) as unpatentable
over Katsumata and Ginter
The Appellants first contend that (1) Katsumata and Ginter fail to
describe limitation [7] of claim 37, and as similarly claimed in claim 55.
App. Br. 1 1 - 15. The Appellants specifically argue that the data distribution
system using the DA code of Katsumata is different from the control unit
using access restriction information to determine whether reproduction
information may be output. App. Br. 12-13 and Reply Br. 3-4. We disagree
with the Appellants. Limitation [7] specifically requires a control unit,
Appeal 2009-006828
Application 101148,178
which receives a request to output reproduction information, to refer to
access restriction information and determine whether reproduction
information may be output. In other words, the control unit refers to access
restriction information to determine whether to output reproduction
information.
Katsumata describes an information distribution system that encrypts
distributed content. FF 01. Katsumata describes that when a request for
content is received by a machine processing manager, a card is loaded in to
the system. FF 02. The balance of funds on a card is checked and
subsequently withdrawn in exchange for the content. FF 02. During this
process, the system can also determine whether a user is a legal user and
only output the appropriate codes and keys if the user is a legal user. FF 02.
That is, if a user is not a legal user, the machine processing unit (control
unit) restricts access to the content from that illegal user. Katsumata further
describes expiring an encryption key after a predetermined period of time
has elapsed. FF 02. This permits the distribution of content only during a
fixed period of time and the distribution of content is restricted upon the
expiration of such a period. As such, Katsumata describes only outputting
information based on the access information specifying legal users or a fixed
period of time and therefore describes limitation [7].
The Appellants acknowledge that Katsumata describes preventing
copying of the contents without permission and properly charging for
contents, but broadly argue that Katsumata only describes using dynamic
authenticating code that changes with the elapse of time and allows the
reproduction of content for predetermined periods of time which is different
from the claimed invention. App. Br. 12. However, as discussed supra,
Appeal 2009-006828
Application 101148,178
Katsumata describes only outputting information based on the access
information specifying legal users or a fixed period of time. The Appellants
fail to provide any further specific rationale as to how Katsumata's
description of restricting access to content without permission or restricting
access after a certain period of time is distinguished from limitation [7]. As
also discussed supra, limitation [7] only requires the control unit refers to
access restriction information to determine whether to output reproduction
information. We find that Katsumata describes determining whether a user
has access to content before outputting the content and therefore describes
limitation [7]. Claims 38-59, 68-69,71 and 75 incorporate this feature by
reference and are argued with claims 37 and 55 as a group. App. Br. 11.
Therefore, Katsumata and Ginter describe these claims for the same reasons.
The Appellants further contend that (2) there is no motivation to
combine Katsumata and Ginter. App. Br. 15-18. We disagree with the
Appellants. Katsumata and Ginter are both concerned with the secure
distribution of content of information to legal users. FF 01. Katsumata
solves this problem by validating users as legal users prior to the distribution
content. FF 01-02. Ginter solves this problem by controlling which specific
parties can receive copies of information and the number of copies that each
party can receive. FF 04. A person with ordinary skill in the art would have
recognized to combine Katsumata and Ginter in order to increase the
security in distributing content by including additional security features and
options, such as specifying specific users or the number of copies to be
distributed. As such, Katsumata and Ginter are concerned with the same
problem and a person with ordinary skill in the art would have been
motivated to combine their teachings.
Appeal 2009-006828
Application 101148,178
The Appellants also contend that (3) Katsumata and Ginter fail to
describe a recording device that operates such that when the recording
device receives data storage and access restriction information, first and
second public encryption keys unique to the recording device, a first
symmetric key generated external to the recording device, and a second
symmetric key updated internally to the recording device whenever data
storage is communicated, are employed to effect encryption, as per claim 60.
App. Br. 18-21. The Appellants specifically argue that Katsumata requires a
database or key generation algorithm, which is not required by claim 60; and
Katsumata fails to describe a symmetric key that is updated whenever data
storage is communicated as required by claim 60. App. Br. 20-21.
We agree with the Appellants. Limitation [7] of claim 60 requires a
symmetric key is updated whenever said data storage is communicated. As
discussed supra, Katsumata describes an information distribution system
that encrypts distributed content. FF 01. The system uses enciphering codes
(M, C, and T) and machine identification (MID) codes to protect distributed
content. FF 01. MID codes are specific to equipment used in the system.
FF 01. Katsumata further describes a DA code that dynamically updates an
enciphering key after the elapse of a specific period of time. FF 01.
However, Katsumata fails to describe that any code or process for updating a
key whenever data storage is communicated. The Examiner failed to
address this rejection in the Answer and has therefore failed provide any
rationale as to how Katsumata or Ginter describe this limitation. As such,
we find that Katsumata and Ginter fail to describe limitation [7] of claim 60.
Claims 61-67,70 and 72 incorporate this feature by reference and as such
Katsumata and Ginter fail to describe these claims as well.
Appeal 2009-006828
Application 101148,178
CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 37-59, 68-69,71 and 75
under 35 U.S.C. 5 103(a) as unpatentable over Katsumata and Ginter.
The Examiner erred in rejecting claims 60-67,70 and 72 under 35
U.S.C. 5 103(a) as unpatentable over Katsumata and Ginter.
DECISION
To summarize, our decision is as follows.
The rejection of claims 37-72 and 75 under 35 U.S.C. 5 103(a) as
unpatentable over Katsumata and Ginter is sustained.
The rejection of claims 60-67,70 and 72 under 35 U.S.C. 5 103(a) as
unpatentable over Katsumata and Ginter is not sustained.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. 5 1.136(a)(l)(iv).
AFFIRMED-IN-PART
mev
Address
Appeal 2009-006828
Application 101148,178
1 WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
2 1250 CONNECTICUT AVENUE, NW, SUITE 700
3 WASHINGTON DC 20036