Ex Parte Nagao

Board of Patent Appeals and Interferences

Nov 28, 2011

10965846 (B.P.A.I. Nov. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YUTAKA NAGAO
____________

Appeal 2010-009051
Application 10/965,846
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK,
and MICHAEL W. KIM, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 2, 4-8, 10-12 and 14-16. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
Appellant appeared for oral argument on November 15, 2011.

Appeal 2010-009051
Application 10/965,846

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BACKGROUND
Appellant’s invention is directed to an information processing
apparatus and method for issuing a license to a communication terminal that
is allowed to use content under usage conditions defined in license
information given by a copyright owner (Spec. 1).
Claim 1 is illustrative:
1. An information processing system, comprising:
a communication terminal configured to obtain a license
including usage conditions of content; and
a server configured to connect to the communication
terminal via a network, wherein the communication terminal
comprises:
a client transmission network interface configured
to transmit first data including information about a first usage
condition of the content and second data including
information about a second usage condition of the content to
the server; and
a client reception network interface configured to
receive third data from the server,
the server comprises:
a server reception network interface configured to
receive the first data and the second data;
a processor configured to generate the third data,
including information about a third usage condition of the
content based on the first data and the second data and to sign
the third data with a private key owned only by the server; and
a server transmission network interface configured
to transmit the third data to the communication terminal, and
the communication terminal is configured to transmit the
first data and the second data to the server, and to receive the
third data from the server.

Appeal 2010-009051
Application 10/965,846

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The Examiner relies on the following prior art reference as evidence
of unpatentability:
Inoue US 2003/0005135 A1 Jan. 2, 2003

White, Ron, et al., How Computers Work (Que 2007)

Appellant appeals the following rejection(s):
1. claims 1, 2, 4-6, and 10-12 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
2. claims 1, 2, 4-8, 10-12, and 14-16 under 35 U.S.C. §103(a) as
being obvious over Inoue, in view of White.

ISSUE
Did the Examiner err in rejecting claims 1 and 11 under 35 U.S.C.
§ 112, second paragraph because the subject matter of these claims is clear
when read in light of the specification?
Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 103(a),
because White does not disclose encrypting a file with a private key, doesn’t
teach the specific document that is signed, and because the decision on how
to sign the third data is a business decision rather than a technical decision?

FACTUAL FINDINGS
We adopt all of the Examiner’s findings regarding the rejection over
prior art as our own. Ans. 6-8.

Appeal 2010-009051
Application 10/965,846

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ANALYSIS
Indefiniteness
We initially note that when addressing issues of claim indefiniteness,
our reviewing court stated that “what we have asked is that the claims be
amenable to construction, however difficult that task may be.” Exxon
Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir.
2001). They have also provided instruction that indefiniteness “requires a
determination of whether those skilled in the art would understand what is
claimed when the claim is read in light of the specification” Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
We agree with Appellant’s arguments regarding this rejection that can
be found on pages 10-11 of the Appeal Brief. Specifically, we hold that a
person of ordinary skill in the art would understand what is claimed in
claims 1, 10 and 11 when the claims are read in light of the specification.
Obviousness
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that White does not disclose encrypting a file with a
private key, because this argument is not commensurate in scope with the
claims in that the claims do not recite encrypting a file with a private key.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that White does not disclose the document that is
signed, because this argument is directed to the teachings of White alone
when the rejection is based on the combined teachings of White and Inoue.
We note that nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097
Appeal 2010-009051
Application 10/965,846

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(Fed. Cir. 1986). In this regard the Examiner relies on Inoue for teaching the
third data.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the decision to sign using a particular technique is
a business decision rather than a technical decision. We agree with the
Examiner that having the processor sign the third data with a private key
would have been no more than the use of a known method of signing a
document to achieve predictable results.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 as being unpatentable over Inoue in view of White. We will also
sustain the Examiner’s rejection of the remaining claims, because the
Appellant does not advance arguments directed to the separate patentability
of the claims that differ from the arguments advanced in regard to the
patentability of claim 1.

DECISION
The Examiner’s rejection of claims 1, 10 and 11 under 35 U.S.C.
§ 112, second paragraph, is not sustained.
The Examiner’s § 103(a) rejection of claims 1, 2, 4-8, 10-12 and
14-16 is sustained.

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1) (2009).

Appeal 2010-009051
Application 10/965,846

6
ORDER

AFFIRMED

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