Ex Parte Maeda

Board of Patent Appeals and Interferences

Mar 10, 2010

11406923 (B.P.A.I. Mar. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KOJI MAEDA
____________

Appeal 2009-012111
Application 11/406,923
Technology Center 3600
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Decided: March 10, 2010
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-012111
Application 11/406,923

2
STATEMENT OF THE CASE
Koji Maeda (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1-3 and 5. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
The invention is directed to large capacity data sales method and
system.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A user terminal comprising:
a reading division for reading an online access code from
a storage medium in which the online access code and
particular data have been stored prior to the storage medium
ever being read from or written to by the user terminal, the
online access code unique to the particular data stored in the
storage medium;
means for sending to a mediation server a registration
request signal including user identification information and the
online access code;
means for receiving from said mediation server a
registration confirmation signal including a key code
corresponding to said online access code;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Sep. 2, 2008) and Reply Brief (“Reply Br.,” filed Jan. 22, 2009),
and the Examiner’s Answer (“Answer,” mailed Nov. 28, 2008).
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means for encrypting said key code to generate an
encrypted key code;
means for storing said encrypted key code; and
means for reproducing said particular data by using the
key code.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Downs US 6,226,618 B1 May 1, 2001
The following rejection is before us for review:
1. Claims 1-3 and 5 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Downs.

ISSUES
An issue, with respect to the rejection of claims 1-3 and 5 under 35
U.S.C. §103(a) as being unpatentable over Downs, is whether Downs
discloses the claim limitations “means for reproducing said particular data
[stored in a storage medium] by using the key code” (claim 1) and “wherein
said key code is used by said user terminal to reproduce said particular data
[stored in a storage medium] at said user terminal” (claim 3).

FINDINGS OF FACT
We rely on the Examiner’s factual findings. Answer 3-6. In that
regard, the Examiner has stated that the claim limitations, “means for
reproducing said particular data by using the key code” (claim 1) and
“wherein said key code is used by said user terminal to reproduce said
particular data at said user terminal” (claim 3), are disclosed by Downs. See
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Application 11/406,923
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col. 82, ll. 46-60. Answer 4 and 6, respectively. Col. 82, ll. 46-60 of Downs
is reproduced below:
The process of Decryption and Re-encryption 194 serves two
purposes. Storing the Content 113 encrypted with an algorithm like
SEAL enables faster than real-time decryption and requires much less
processor utilization to perform the decryption than does a more
industry standard type algorithm like DES. This enables the Player
Application 195 to perform real-time concurrent decryption-decode-
playback of the Content 113 without the need to first decrypt the
entire file for the Content 113 prior to decode and playback. The
efficiency of the SEAL algorithm and a highly efficient decode
algorithm such as IBM’s implementation of the AC3 algorithm,
allows not only concurrent operation (streaming playback from the
encrypted file) but also allows this processor to occur on a much
lower powered system processor.

PRINCIPLES OF LAW
Obviousness
Section 103 forbids issuance of a patent when ‘the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.’
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
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Application 11/406,923
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circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
The independent claims are 1 and 3. Both are drawn to apparatuses
and use means-plus-function language. In that regard, a claim limitation that
includes the term “means” is presumed to be intended to invoke means-plus-
function treatment, i.e., treatment under 35 U.S.C. §112, 6th paragraph.
Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999)
(“presumed an applicant advisedly used the word “means” to invoke the
statutory mandates for means-plus-function clauses.”). Thus, these claims
should have been construed to determine the structure disclosed in the
Specification corresponding to the functions recited in the means-plus-
function limitations.
The plain and unambiguous meaning of paragraph six is that
one construing means-plus-function language in a claim must
look to the specification and interpret that language in light of
the corresponding structure, material, or acts described therein,
and equivalents thereof, to the extent that the specification
provides such disclosure. Paragraph six does not state or even
suggest that the PTO is exempt from this mandate, and there is
no legislative history indicating that Congress intended that the
PTO should be.
In re Donaldson 16 F.3d 1189, 1193 (Fed. Cir. 1994). Only after such an
analysis has been done can one determine if the prior art discloses the
corresponding structure. Notwithstanding that has not been done here, we
nevertheless do not find the claim limitations “means for reproducing said
particular data by using the key code” (claim 1) and “wherein said key code
is used by said user terminal to reproduce said particular data at said user
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terminal” (claim 3) disclosed at col. 82, ll. 46-60 of Downs as the Examiner
has asserted.
Col. 82, ll. 46-60 of Downs (see supra) does not appear to disclose the
key for reproducing data stored in a storage medium as claimed. What is
described there is a SEAL algorithm that “enables the Player Application
195 to perform a real-time concurrent decryption-decode-playback of the
Content 113 without the need to first decrypt the entire file for the Content
113 prior to decode and playback.” Even if we would assume the Examiner
means to view the SEAL algorithm as a whole as corresponding to the key
in the claims, which has not been made clear, this passage does not describe
reproducing data via the SEAL algorithm. Nevertheless, in both claims 1
and 3, the key is recited to correspond to the online access code. The
Examiner equated the “symmetric key” disclosed at col. 82, ll. 30-35 of
Downs as corresponding to the key in the claims. See Answer 3 and 7. This
“symmetric key” is part of the SEAL encryption technology used for re-
encrypting the Content 113. But nowhere do we find disclosure that the
“symmetric key” corresponds to an online access code. In fact, it is not clear
to us what the Examiner is referring to in Downs as disclosing the online
access code.

CONCLUSIONS
For the foregoing reasons, we do not find that a prima facie case of
obviousness under §103 for the claimed subject matter over Downs has been
established in the first instance.

Appeal 2009-012111
Application 11/406,923
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DECISION
The decision of the Examiner to reject claims 1-3 and 5 is reversed.

REVERSED

mev

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