Ex Parte Marples et alDownload PDFPatent Trial and Appeal BoardDec 22, 201411341172 (P.T.A.B. Dec. 22, 2014) Copy Citation 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. 11/341,172 01/26/2006 David J. Marples 94572 9534 22242 7590 12/22/2014 FITCH EVEN TABIN & FLANNERY, LLP 120 SOUTH LASALLE STREET SUITE 1600 CHICAGO, IL 60603-3406 EXAMINER NIGH, JAMES D ART UNIT PAPER NUMBER 3685 MAIL DATE DELIVERY MODE 12/22/2014 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 DAVID J. MARPLES and JOHN R. WULLERT II ____________________ Appeal 2012-0067511 Application 11/341,172 Technology Center 3600 ____________________ Before: MURRIEL E. CRAWFORD, MICHAEL W. KIM, and NINA L. MEDLOCK, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants seek our review under 35 U.S.C. § 134 from the Examiner’s non-final rejection of claims 26–52. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 The Appellants identify the real party in interest is TTI Inventions C LLC. (App. Br. 3). Appeal 2012-006751 Application 11/341,172 2 Appellants’ invention is directed generally to digital content distribution in a telecommunications network. (Spec. ¶ 2). Claim 26 is illustrative: 26. A method comprising: receiving at a controller computing device a request to transfer digital content from a first computing device to a second computing device; receiving at the controller computing device a key/hash pair from a third computing source; sending from the controller computing device an encryption key based on the key/hash pair to the first computing device for encrypting the digital content; the controller computing device authorizing the transfer of the digital content from the first computing device to the second computing device; receiving at the controller computing device from the second computing device a result of a hash function performed on the digital content at the second computing device; the controller computing device comparing the key/hash pair provided by the third computing device to the result of the hash function received at the controller computing device; sending to the second computing device, in response to comparing that the result of the hash function corresponds to the key/hash pair from the controller, a decryption key for decrypting the digital content at the second computing device. Appellants appeal the following rejections: Claims 26–34 and 36–48 are rejected under 35 U.S.C. § 103(a) as unpatentable over Pinkas (US 2003/0084003 A1, pub. May 1, 2003, now US 7,136,840) and Andivahis (WO 03/067809 A1, pub. Aug, 14, 2003). Claims 35 and 49–52 are rejected under 35 U.S.C. ¶ 103(a) as unpatentable over Pinkas, Andivahis, and Ginter (US 5,892,900, iss. Apr. 6, 1999). Appeal 2012-006751 Application 11/341,172 3 ANALYSIS Each of independent claims 26 and 36 recites limitations substantially equivalent to “receiving at the controller computing device a key/hash pair from a third computing source.” In addition, claims 26 and 36 each recites four devices: a first content-sending device, a second content-receiving device, a third source of key/hash pairs, and a fourth controller computing device. We are persuaded by the Appellants’ argument that Pinkas fails to disclose “receiving at the controller computing device a key/hash pair from a third computing source.” App. Br. 12. The Examiner directs us to Pinkas, paragraphs 38 and 39 as disclosing the disputed limitation. (Ans. 5, 19). There, Pinkas discloses “large content providers 290” as the first sending device, “small peers 292” as the second receiving device, and an “escrow server 104” as the fourth controller computing device. (¶ 39). Pinkas discloses the first device encrypts “content 291” and supplies the key and hash values to the escrow server/controller device. (Id.). However, Pinkas, at paragraph 39, does not disclose that either the escrow server/controller device or the first/content provider device receives the key/hash pair from a third computing source. The Examiner does not identify explicitly a third computing source of key/hash pairs in Pinkas, nor does the Examiner rely on Andivahis for this limitation. See Ans. 19. With no third computing source to send a key/hash pair to the escrow server/controller device, and thus, no key/hash pair that the escrow server/controller device sends to the first/content provider device, Pinkas does not meet the claim language. Therefore, the Examiner has Appeal 2012-006751 Application 11/341,172 4 failed to set forth a prima facie case of obviousness based on the combination of Pinkas and Andivahis. For this reason, we will not sustain the rejection of claims 26 or 36. We also will not sustain the rejections of dependent claims 27–34 and 37–48, because they depend from claims 26 or 36. Concerning the rejection of dependent claims 35 and 49–52, Ginter is not cited for remedying the aforementioned deficiencies of independent claims 26 and 36. Accordingly, we also do not sustain the rejection of dependent claims 35 and 49–52. DECISION We reverse the rejections under 35 U.S.C. § 103(a) of claims 26–52. REVERSED pgc Copy with citationCopy as parenthetical citation