Ex Parte Kim et al

Patent Trial and Appeal Board

May 13, 2016

13012461 (P.T.A.B. May. 13, 2016)

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.
13/012,461 01/24/2011 Young-seol KIM 2092-52
(OEC/6030/US_DMC)
6820
66547 7590 05/16/2016
THE FARRELL LAW FIRM, P.C.
290 Broadhollow Road
Suite 210E
Melville, NY 11747
EXAMINER
REAGAN, JAMES A
ART UNIT PAPER NUMBER
3621
MAIL DATE DELIVERY MODE
05/16/2016 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 YOUNG-SEOL KIM, JAE-WON LEE, and SUN-GUN JUNG
____________

Appeal 2013-008562
Application 13/012,4611
Technology Center 3600
____________

Before ANTON W. FETTING, BRUCE T. WIEDER,
and ROBERT J. SILVERMAN, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1, 3–8, 16, and 18–23.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 According to Appellants the real party in interest is Samsung Electronics
Co., Ltd. (Appeal Br. 1.)
2 We treat the Examiner’s statements that claims “1, 3–6, 16, and 18–21”
are rejected (see Final Action 1, 2, 7; Answer 5) as inadvertent as the Final
Action additionally rejects claims 22 and 23 (Final Action 10). We also
treat as inadvertent the Examiner’s inclusion of cancelled claim 17 in the
statement that claims 16–21 are rejected. (See id. at 9.)
Appeal 2013-008562
Application 13/012,461

2
CLAIMED SUBJECT MATTER
Appellants’ claimed invention “generally relates to a user terminal, a
server, and a controlling method thereof, and, more particularly, to a user
terminal using an application content, which is partially encrypted, a server,
and a controlling method thereof.” (Spec. 1.)
Claims 1 and 16 are the independent claims on appeal. Claim 1 is
illustrative and is reproduced below (emphasis added):
1. A user terminal, comprising:
a communication interface unit which receives an
application content, at least a part of which is encrypted;
a storage unit which stores the received application
content;
a decryption unit which decrypts the application content;
a user interface unit which receives a command to execute
the application content; and
a controlling unit, in response to the received command,
which controls the decryption unit to install the application
content, at least a part of which is encrypted, and decrypt the
encrypted part of the application content.

REJECTIONS
Claims 1, 3–6, 16, and 18–21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Unger (US 2002/0196939 A1, pub. Dec. 26, 2002) and
Zunke (US 2002/0197528 A1, pub. Dec. 26, 2002). (Final Action 7.)
Claims 7, 8, 22, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Unger, Zunke, and Official Notice taken by the Examiner.
(See id. at 10.)

Appeal 2013-008562
Application 13/012,461

3
ANALYSIS
Appellants argue with regard to claims 1 and 16 that “the combination
of Unger and Zunke fails to disclose that the encrypted part of installed
application content is decrypted in response to a command to execute the
application content.” (Appeal Br. 4.)
The Examiner answers that Zunke teaches “linking decryption of
content with the execution of the installation of the content.” (Answer 12,
citing Zunke ¶¶ 12, 18.) Paragraph 18 of Zunke teaches that a decryption
function may be installed and that “data stored by the installed application
. . . is always encrypted before storage, and wherein the data read again by
the installed application is decrypted again.”
Appellants reply that
Zunke discloses the storage of encrypted components and the
execution of an installation program. While the encrypted
components are accessed for installation of an application by an
installation program, the encrypted components are not executed.
Instead, it is the installation program of Zunke that is executable.
Thus, Zunke describes components that are encrypted but not
executed, and an installation program that is executed but not
encrypted. Zunke fails to remedy the deficiency of Unger, and the
combination of Unger and Zunke fails to disclose that the
encrypted part of installed application content is decrypted in
response to a command to execute the application content, as
recited in Claim 1.

(Reply Br. 3.)
Appellants’ argument is persuasive. Zunke teaches that a decryption
function may be installed. Zunke also teaches that data stored and encrypted
by the already installed application content is decrypted when read by the
application content. But the cited portions of Zunke do not teach that
Appeal 2013-008562
Application 13/012,461

4
decryption of the application content itself occurs in response to a command
to execute the application content, as required by claim 1.
Therefore, we reverse the rejection of independent claims 1 and 16.
For the same reason, we reverse the rejections of dependent claims 3–8 and
18–23.

DECISION
The Examiner’s rejections of claims 1, 3–8, 16, and 18–23 under
35 U.S.C. § 103(a) are reversed.

REVERSED