Ex Parte Molaro

Board of Patent Appeals and Interferences

Mar 15, 2010

10342078 (B.P.A.I. Mar. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte DONALD JOSEPH MOLARO 8
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Appeal 2009-006533 11
Application 10/342,078 12
Technology Center 3600 13
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Decided: March 16, 2010 16
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Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and BIBHU R. 20
MOHANTY, Administrative Patent Judges. 21
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CRAWFORD, Administrative Patent Judge. 23
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25
DECISION ON APPEAL26
Appeal 2009-006533
Application 10/342,078

2
STATEMENT OF THE CASE 1
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 1-11, 13-28, and 30-35. We have jurisdiction under 35 U.S.C. 3
§ 6(b) (2002). 4
Appellant invented systems and methods for real-time delivery of a 5
license for previously stored encrypted content (Spec. 1:5-7). 6
Claim 1 under appeal is further illustrative of the claimed invention as 7
follows: 8
1. A method of securely providing 9
content from a content source to a local device, the 10
method comprising: 11
a. downloading and storing encrypted 12
content from the content source to a local storage 13
within a local server; 14
b. storing one or more encryption keys 15
corresponding to the encrypted content at the 16
content source; and 17
c. utilizing the encrypted content by 18
streaming segments of the encrypted content from 19
the local storage to a processing circuit within the 20
local device while the one or more encryption keys 21
are simultaneously streamed from the content 22
source to the processing circuit. 23
The prior art relied upon by the Examiner in rejecting the claims on 24
appeal is: 25
Ginter US 5,892,900 Apr. 6, 1999 26
Milsted US 6,263,313 B1 Jul. 17, 2001 27
The Examiner rejected claims 1-11, 13-28, and 30-35 under 35 U.S.C. 28
§ 103(a) as being unpatentable over Milsted in view of Ginter. 29
We REVERSE. 30
Appeal 2009-006533
Application 10/342,078

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ISSUE 1
Did the Examiner err in asserting that a combination of Milsted and 2
Ginter renders obvious utilizing the encrypted content by streaming 3
segments of the encrypted content from the local storage within a local 4
server to a processing circuit within the local device while the one or more 5
encryption keys are simultaneously streamed from the original content 6
source to the processing circuit, as recited in independent claims 1, 11, and 7
25? 8
9
FINDINGS OF FACT 10
Specification 11
Appellant invented systems and methods for real-time delivery of a 12
license for previously stored encrypted content (Spec. 1:5-7). 13
14
Milsted 15
Milsted discloses a system and related tools for the secure delivery 16
and rights management of digital assets, such as print media, films, games, 17
and music over global communications networks such as the Internet and the 18
World Wide Web (col. 1, ll. 49-54). 19
If the user has purchased a copy of the Content 113 prior to the release 20
date set for the sale, the License(s) SC 660 is returned without the 21
Symmetric Keys 623. The License(s) SC 660 is returned to the 22
Clearinghouse(s) 105 on or after the release date to receive the Symmetric 23
Keys 623. As an example, the Content Provider(s) 101 allow users to 24
download a new song prior to the release date for the song to enable 25
customers to download the song and be prepared to play the song before a 26
Appeal 2009-006533
Application 10/342,078

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date set by the Content Provider(s) 101. This allows immediate opening of 1
the Content 113 on the release date without having to content for bandwidth 2
and download time on the release date (col. 47, ll. 1-13). 3
The Response HTML page is displayed in the Browser window 4
acknowledging the End-User(s)' purchase. The Offer SC(s) 641 are then 5
opened and the Content 113 (e.g., song or album) names along with the 6
projected download times are extracted from them, step 1401. A new 7
window is then displayed with this information and the End-User(s) is 8
presented with options to schedule the download(s) of the Content 113 (e.g., 9
for music, songs or entire albums), step 1402. The End-User(s) can select 10
immediate download or can schedule the download to occur at a later time 11
(col. 83, ll. 10-20). 12
When the scheduled download time occurs or if immediate download 13
was requested, the SC(s) Processor 192 creates Order SC(s) 650 from 14
information in the Transaction SC(s) 640, Offer SC(s) 641, and the Public 15
Key 661 of the End-User(s) generated at install time. This Order SC(s) 650 16
is sent via HTTP request to the Clearinghouse(s) 105. When the 17
Clearinghouse(s) 105 returns the License SC(s) 660, the Helper Application 18
198 is re-invoked to process the License SC(s) 660. The License SC(s) 660 19
is then opened and the URL of the Content Hosting Site(s) 111 is extracted 20
from the referenced Order SC(s) 650. The License SC(s) 660 is then sent to 21
the specified Content Hosting Site 111, via http request through the Browser, 22
requesting download of the Content SC(s) 630. When the Content SC(s) 23
630 comes back to the Browser, the Helper Application 198 is re-invoked 24
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Application 10/342,078

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again. The SC(s) Processor 192 displays the name of the Content 113 being 1
downloaded along with a download progress indicator and an estimated time 2
to completion (col. 83, ll. 27-44). 3
As the Content 113 is being received by the SC(s) Processor 192, it 4
loads the Content 113 data into memory buffers for decryption. The size of 5
the buffers depends on the requirements of the encryption algorithm and 6
watermarking technology 193 and is the minimum size possible to reduce 7
the amount of unencrypted Content 113 exposed to hacker code. As a buffer 8
is filled, it is decrypted using the Key 623 (corresponding to the Public Key 9
661) of the End-User(s) extracted from the License SC(s) 660, which itself is 10
first decrypted using the Private Key. The decrypted buffer is then passed to 11
the watermarking function (col. 83, ll. 45-55). 12
13
PRINCIPLES OF LAW 14
Obviousness 15
During examination, the examiner bears the initial burden of 16
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 17
1443, 1445 (Fed. Cir. 1992). 18
19
ANALYSIS 20
We are persuaded the Examiner erred in asserting that a combination 21
of Milsted and Ginter renders obvious utilizing the encrypted content by 22
streaming segments of the encrypted content from the local storage within a 23
local server to a processing circuit within the local device while the one or 24
more encryption keys are simultaneously streamed from the original content 25
source to the processing circuit, as recited in independent claims 1, 11, and 26
Appeal 2009-006533
Application 10/342,078

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25 (App. Br. 5-8). The Examiner asserts that column 47, lines 1-13 of 1
Milsted discloses the aforementioned portions of claims 1, 11, and 25 (Ex. 2
Ans. 4, 6-7). Specifically, the Examiner asserts that if the user preferred to 3
download both the content and the encryption keys on the release date, both 4
the content and the encryption keys would be simultaneously streaming. 5
However, Milsted discloses that both Content 113 and Symmetric Keys 623 6
would be downloaded from Content Provider(s) 101, which would 7
correspond to the recited original content source. Thus, in this embodiment 8
of Milsted, the encrypted content is not streamed from the local storage 9
within the local server, as recited in independent claims 1, 11, and 25. 10
The Examiner also asserts that column 83, lines 12-55 disclose the 11
aforementioned portions of claims 1, 11, and 25 (Ex. Ans. 4, 6-7). However, 12
that portion of the Milsted discloses that “SC(s) Processor 192 creates Order 13
SC(s) 650 from … the Public Key 661 of the End-User(s) generated at 14
install time” (col. 83, ll. 27-31). This Order SC(s) is then sent from the local 15
computer to Clearinghouse(s) 105, which then returns License SC(s) 660 to 16
the local computer (col. 83, ll. 31-33). License SC(s) 660 includes Key 623 17
used to decrypt Content 113 (col. 83, ll. 51-54). The location of Content 18
Hosting Site 111 is also extracted from License SC(s) 660, which then 19
results in downloading Content 113 from Hosting Site 111 to the local 20
computer (col. 83, ll. 35-46). Content 113 is then decrypted using Key 623 21
(col. 83, ll. 45-54). Accordingly, in this scenario, all keys, whether Public 22
Key 661 or Key 623, are already present on the local machine before 23
Content 113 is downloaded and/or decrypted. Thus, any simultaneous 24
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streaming of the encryption keys, with the content, would be from the local 1
computer, and not from the original content source, as recited in independent 2
claims 1, 11, and 25. 3
Accordingly, because the Examiner has not met the initial burden of 4
setting forth a proper case of obviousness, we will not sustain the rejections 5
of independent claims 1, 11, and 25, and their respective dependent claims 6
2-10, 13-24, 26-28, and 30-35. See In re Oetiker, 977 F.2d at 1445. 7
8
CONCLUSION 9
The Appellant has shown that the Examiner erred in rejecting claims 10
1-11, 13-28, and 30-35. 11
12
DECISION 13
The decision of the Examiner to reject claims 1-11, 13-28, and 30-35 14
is reversed. 15
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REVERSED 17
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hh 22
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Jonathan O. Owens 24
HAVERSTOCK & OWENS LLP 25
162 North Wolfe Road 26
Sunnyvale, CA 94086 27