Ex Parte Kihara et al

Patent Trial and Appeal Board

Jun 13, 2013

10861212 (P.T.A.B. Jun. 13, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/861,212 06/04/2004 Nobuyuki Kihara 09812.0461-01000 9418
22852 7590 06/13/2013
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
SHIN, KYUNG H
ART UNIT PAPER NUMBER
2443
MAIL DATE DELIVERY MODE
06/13/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte NOBUYUKI KIHARA and TEPPEI YOKOTA
____________________

Appeal 2012-006544
Application 10/861,212
Technology Center 2400
____________________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-006544
Application 10/861, 212

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 7-14 and 18. (App. Br. 5.) We have jurisdiction under 35 U.S.C.
§ 6(b). This appeal is related to prior appeal 2008-005448, decided June 17,
2009. In the prior appeal, we affirmed the Examiner's rejection of claims 1-
3 and 16, and we reversed the Examiner's rejection of claim 4.
We reverse.

INVENTION
Appellants’ claimed invention is generally related to a data processing
apparatus, a data processing method, a terminal unit, and a transmission
method of a data processing apparatus for performing a re-encrypting
process in two stages in such a manner that when the terminal unit sends
encrypted contents data to a server, the terminal unit re-encrypts a key for
decrypting the encrypted contents data and the server re-encrypts the re-
encrypted key so as to secure the copyright protection of the contents data.
(Spec. 1).

Independent claim 11, reproduced below, is illustrative of the subject
matter on appeal.
11. A data processing apparatus comprising an
attachable/detachable non-volatile recording medium and a host
for receiving/transmitting encrypted contents data from/to the
attachable/detachable non-volatile recording medium,

wherein the attachable/detachable non-volatile recording
medium comprises:

Appeal 2012-006544
Application 10/861, 212

3
an interface for receiving from the host contents data
encrypted with a first key by first encrypting means at the host,
and the first key encrypted with a second key;

decrypting means for decrypting the encrypted first key
with the second key;

second encrypting means for re-encrypting the decrypted
first key with a third key, the third key stored in the
attachable/detachable non-volatile recording medium;

storage means for storing, in the attachable/detachable
non-volatile recording medium, the first key re-encrypted with
the third key and the contents data encrypted with the first key;

receiving means for receiving, from the storage means,
the first key re- encrypted with the third key; and

decrypting means for decrypting, with the third key, the
first key re-encrypted with the third key, and

wherein the host comprises:

encrypting means for re-encrypting the decrypted first
key with a fourth key that is different from the third key; and

storing means for storing the contents data encrypted
with the first key and the first key re-encrypted with the fourth
key.

REFERENCES
Ichimura US 6,034,832 Mar. 7, 2000
Gruse US 6,398,245 B1 June 4, 2002
Milsted US 7,269,564 B1 Sept. 11, 2007

Appeal 2012-006544
Application 10/861, 212

4
REJECTION
Claims 7-14 and 18 stand rejected under 35 U.S.C. 103(a) as being
unpatentable over Milsted, Gruse, and Ichimura. (Ans. 4-15.)

ANALYSIS
Appellants contend independent claim 11 "recites two separate
devices, one comprising 'encrypting means for re-encrypting [a] decrypted
first key with a third key,' and the other comprising 'encrypting means for
re-encrypting the decrypted first key with a fourth key that is different from
the third key. '" (Reply Br. 2; see generally App. Br. 12). Appellants
additionally contend the Examiner's proposed combination of the Milsted,
Gruse, and Ichimura references discloses the re-encryption of keys at a
single device. (Reply Br. 2). We agree with Appellants.
Appellants further contend the combination of teachings proposed by
the Examiner would at best yield separate devices that happened to be
connected by a cord, one carrying out its own encryption/decryption process
and the other carrying out its own encoding/decoding process completely
independent of the process carried out on the first such device. (Reply Br.
3). Appellants contend independent claim 11 requires two separate devices
both including means for re-encrypting the same key (i.e., the decrypted first
key). (Reply Br. 3). Again, we agree with Appellants.
The Examiner provides lengthy discussions in the statement of the
rejection (Ans. 5-9) and the responsive arguments (Ans. 16-25). However,
the Examiner's discussions do not directly and succinctly address these two
contentions by Appellants. Therefore, Appellants have shown error in the
Appeal 2012-006544
Application 10/861, 212

5
Examiner's conclusion of obviousness, and we cannot sustain the rejection
of independent claim 11 and its dependent claims 12-14.
Independent claim 18 contains similar limitations to claim 11.
Appellants set forth similar arguments with respect to claim 18. The
Examiner's discussions do not directly and succinctly address these two
contentions by Appellants with respect to claim 18. Therefore, Appellants
have shown error in the Examiner conclusion of obviousness, and we cannot
sustain the rejection of independent claim 18.
Moreover, we note independent claims 11 and 18 are drafted in
"means plus function" format requiring the Examiner to make a showing
with respect to the corresponding structure, acts, and materials under 35
U.S.C. 112, sixth paragraph, with respect to the prior art rejection under 35
U.S.C. 103(a). We find the Examiner has not performed this evaluation with
respect to the application of the prior art teachings of the three references
relied in combination.

CONCLUSION
The Examiner erred in rejecting claims 11-14 and 18 under 35 U.S.C.
§ 103(a).

DECISION
The Examiner’s decision rejecting claims 11-14 and 18 is reversed.

REVERSED
Vsh