11406921 (B.P.A.I. Feb. 19, 2010)

Ex Parte Maeda

Board of Patent Appeals and InterferencesFeb 19, 2010

11406921 (B.P.A.I. Feb. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte KOJI MAEDA ______________ Appeal 2009-008495 Application 11/406,921 Technology Center 3600 ________________ Decided: February 19, 2010 ________________ Before, MURRIEL E. CRAWFORD, ANTON W. FETTING, JOSEPH A. FISCHETTI, Administrative Patent Judges. JOSEPH A. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-008495 Application 11/406,921 STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § § 6(b) and 134(a) from the final rejection of claims 1, 2, 3, 6, 7, 10, and 12. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Claims 4, 5, 8, 9, 11, and 13 are withdrawn from consideration. A hearing was held on February 4, 2010. SUMMARY OF DECISION We REVERSE. The Appellant claims a large capacity data sales method and system, and a mediation method and system for selling data of large capacity (Spec. 2 ¶ [0002]). Claims 1 and 10, reproduced below, are representative of the subject matter on appeal read as follows: 1. (Previously Presented) A server, comprising: means for receiving a particular online access code from a user terminal, said particular online access code corresponding to particular data stored in a storage medium; means for storing, for each online access code of a plurality of online access codes, a corresponding key code in association with the online access code; means for searching for the particular online access code in said means for storing; means for acquiring a particular key code corresponding to said particular online access code from said means for storing when said particular online access code is found in said means for storing by said means for searching; and means for sending to the user terminal a registration confirmation signal including the particular key code, said Appeal 2009-008495 Application 11/406,921 3 particular key code enabling said user terminal to reproduce said particular data stored in said storage medium. 10. (Previously Presented) A computer-readable recording medium storing a computer program which, when executed on a computer, causes the computer to perform steps of: reading an online access code from a storage medium storing the online access code and particular data, the online access code and the particular data stored in the storage medium prior to the storage medium ever being read from or written to by the computer; sending to a server a registration request signal comprising the online access code, the online access code unique to the particular data stored in the storage medium; extracting a key code from a registration confirmation signal received from the server, said key code corresponding to said online access code; encrypting said key code to provide an encrypted key code; storing said encrypted key code; decrypting the encrypted key code to recover the key code; and reproducing said particular data by using the key code. THE REJECTION The reference set forth below is relied upon as evidence of anticipation: Downs US 6,226,618 B1 May 1, 2001 Claims 1, 2, 3, 6, 7, 10, and 12 are rejected under 35 U.S.C. 103(a) as being unpatentable over Downs et al. (U.S. Patent No. 6,226,618) (hereinafter Downs). Appeal 2009-008495 Application 11/406,921 4 Claims 1 and 6 are the sole independent claims from which all dependent appealed claims depend. Claims 1 and 6 stand rejected under 35 U.S.C. § 103(a) over Downs. Claims 1 and 6 require: means for searching for the particular online access code in said means for storing. Appellant’s Brief on page 3 states that the means for searching is identified by the Specification as: “key code sending feasibility determination division; (FIG. 6, reference 84; page 42, lines 22-25)”. The Specification describes at page 42 a feasibility determination division 84 in the context of “If the results of analyzing the registration request signal are inputted to the control division 82, the key code sending feasibility determination division 84 performs a search, as shown in Fig. 7, as to whether the online access code 60 is stored in the online code database 85 (step S 1).” The Examiner maintains that Downs discloses that this means is disclosed by “Downs, at, e.g., col 81, ln 43- 60, where Transaction SC (640) and Offer SC (641) are already stored and thus obviously are being somehow found.” (Answer 4-5) We disagree with the Examiner. We do not find that Downs discloses a means for searching for the particular online access code in said means for storing. Rather, according to Downs, Downs discloses that a Public key 661 is installed at the End-Users’ Appeal 2009-008495 Application 11/406,921 5 station(s) at install time and is used by the Clearinghouse 105 to process a context order. (Downs, col. 81, ll. 43-60) We cannot thus agree with the Examiner that the use of a Public key generated by the End User would inherently require a search because a public key, as the name suggests, would be known to the public and a search for a given user would not be necessary. Since claims 2, 3, and 7 depend from claims 1 and 6, and since we cannot sustain the rejection of claims 1 and 6, the rejection of the dependent claims likewise cannot be sustained. Claims 10 and 12 require: 1. reading an online access code from a storage medium storing the online access code and particular data, the online access code and the particular data stored in the storage medium prior to the storage medium ever being read from or written to by the computer; 2. encrypting said key code to provide an encrypted key code; storing said encrypted key code; decrypting the encrypted key code to recover the key code; and reproducing said particular data by using the key code. The Examiner found: that this feature is disclosed in: … Downs, at col 82 In 46-60 where player application plays or reproduces the data, which has been decrypted. Note also, at, e.g., col 81, ln 43-60, where Transaction SC (640) and Offer SC (641) are already stored and thus obviously are being read. Further, e.g. at col 81, In 48-50 the clearinghouse (or server) sends the license from which at col 82 In 1-5 the public key is extracted and which also contains the SEAL Appeal 2009-008495 Application 11/406,921 6 algorithm which is used to decrypt the content for playback (col 83 In 28-55). (Answer 7) The Appellant however argues: … the random Symmetric Key mentioned at col. 82, lines 32-33, of the Downs reference does not satisfy the feature of extracting a key code from a registration confirmation signal received from the server, since the random Symmetric Key mention at col. 82, lines 32-33, of the Downs reference is not received from the clearinghouse 105 that the Examiner's Answer points to as the server. (Downs; col. 82, lines 30-35). (Examiner's Answer; page 7) (Emphasis Added). (Reply Appeal Br. 15, 16) We agree with Appellant. We find that the random Symmetric Key used for the IBM SEAL encryption in Downs is different from the symmetric Keys 623 for the content and metadata that are in the License SC 660 because Downs explicitly discloses that Key 623 is destroyed and the new SEAL key that is the random Symmetric Key used for the IBM SEAL encryption is used in its place after downloading. (Downs; col. 82, lines 33-39). Thus, the IBM SEAL encryption is not established in the user device prior to the storage medium ever being read from or written to by the computer. Even reading key 623 alternatively as the key code extracted from a registration Appeal 2009-008495 Application 11/406,921 7 confirmation signal received from the server, we find that this reading still does not meet the claim requirement because claims 10 and 12 require that the encrypted key code be used to recover the key code and then reproduce the particular data, which according to Downs is the SEAL key and not the particular data. CONCLUSIONS OF LAW We conclude the Appellant has shown that the Examiner erred in rejecting claims 1, 2, 3, 6, 7, 10, and 12 under 35 U.S.C. § 103(a) as unpatentable over Downs, DECISION Accordingly we will not sustain the rejection of claims 1, 2, 3, 6, 7, 10 and 12. REVERSED MP FOLEY AND LARDNER LLP SUITE 500 3000 K STREET NW WASHINGTON DC 20007