Ex Parte Naito

Board of Patent Appeals and Interferences

Jul 11, 2012

11118325 (B.P.A.I. Jul. 11, 2012)

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.
11/118,325 05/02/2005 Joji Naito 0124/0039 7787
21395 7590 07/11/2012
LOUIS WOO
LAW OFFICE OF LOUIS WOO
717 NORTH FAYETTE STREET
ALEXANDRIA, VA 22314
EXAMINER
ARMOUCHE, HADI S
ART UNIT PAPER NUMBER
2432
MAIL DATE DELIVERY MODE
07/11/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JOJI NAITO
____________________

Appeal 2010-003616
Application 11/118,325
Technology Center 2400
____________________

Before JOSEPH L. DIXON, THU A. DANG,
and ANDREW J. DILLON, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/118,325

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I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

A. INVENTION
Appellant’s invention is directed to a system and method that
prohibits the use (reproduction or copying) of data by comparing attribute
information of the data, the receiving device, and the sending device;
wherein, a comparison of data based upon the condition of data use (start
and end times of use) from either device is used to determine whether
multiple apparatus use exists and, therefore, limit the use of the data (Figs. 1
and 2; Abstract; Spec. 10-18).

B. ILLUSTRATIVE CLAIM
Claim 9 is exemplary:
9. In a system including a plurality of data using apparatuses
having attribute information pieces respectively, the data using
apparatuses holding data use histories respectively, wherein
each of the data use histories is updated for every data
use event by adding thereto a record relating a data use time
information piece about use of a data piece by the present data
using apparatus, a data identification information piece for
identifying said data piece, and an apparatus identification
information piece for identifying the present data using
apparatus with each other, a data use history analyzing
method implemented by each of the data using apparatuses
which comprises the steps of:

a) comparing the attribute information piece of the
present data using apparatus and one or more attribute
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information pieces of one or more data using apparatuses
different from the present data using apparatus to detect at least
one data using apparatus having an attribute information piece
identical with the attribute information piece of the present
data using apparatus, and to detect, among records in data use
histories of one or more data using apparatuses different from
the present data using apparatus, those records relating to the
detected at least one data using apparatus;

b) deciding whether or not all records among records in
the data use history of the present data using apparatus and the
records detected by the step a) include records in which terms
represented by data use time information pieces at least
partially overlap each other, and data identification information
pieces are identical with each other and apparatus identification
information pieces are different from each other; and

c) detecting overlap use of a data piece identified by the
identical data identification information pieces when the step b)
decides that all records include records in which terms
represented by data use time information pieces at least
partially overlap each other, and data identification information
pieces are identical with each other and apparatus identification
information pieces are different from each other.

C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kawakami US 7,266,202 Bl Sep. 04, 2007

Claims 1-15 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Kawakami.

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II. ISSUES
The dispositive issues before us are whether the Examiner has erred in
determining that Kawakami teaches:
1. “sixth means for deciding whether or not at least one of the first
data use terms calculated by the fourth means and at least one of the second
data use terms calculated by the fifth means at least partially overlap each
other” (claim 1, emphasis added); and
2. “detecting overlap use of a data piece identified by the identical
data identification information pieces when the step b) decides that all
records include records in which terms represented by data use time
information pieces at least partially overlap each other, and data
identification information pieces are identical with each other and apparatus
identification information pieces are different from each other” (claim 9,
emphasis added).

III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Kawakami
1. Kawakami discloses a personal computer that controls the
playback of content from the hard drive of the computer by computing a
hash value of a content-managing music data base and comparing it with a
previously stored hash value (Abstract).
2. Data is transferred to a portable device 6 from the PC that is
composed of a header and content; wherein, the header includes playback
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limitation data, start date, end date, playback limit, and playback counter
(any data necessary for the playback limitation) (col. 10, ll. 32-37).
3. The playback limitation data is used to indicate whether there is
set a playback period (range) for which a content can be played 20 back (i.e.,
start date or end date) or a playback limit (a limited number of times) a
content can be played back (col. 11, ll. 19-22).
4. If the present date is past the playback end date, the move
management program 134 erases the selected content 20 from the content
and music databases (col. 29, ll. 18-22). Thereafter, the CPU 32 computes
the hash value of the entire music data base to prohibit content from being
moved and compares it to a previously stored hash value (col. 26, ll. 39-44;
col. 29, ll. 18-26); wherein, when there is no coincidence between these hash
values, a move management program 134 makes a determination that the
music data base has possibly been falsified or altered and invokes a display
message to that effect; terminating the operation (not allowing copying of
the data) (col. 26, ll. 39-50). When there is coincidence, the user is allowed
to copy the data (col. 23, ll. 55-61).

IV. ANALYSIS
Claims 1-15
As to independent claim 9, Appellant contends that the “reliance by
the [E]xaminer of the comparison of the hash values to find coincidence
between those values has no bearing at all to the subject matter set forth in
steps b) and c) of claim 9” (App. Br. 33-34).
However, the Examiner relies upon the same findings (which can be
interpreted in light of claim 9) set forth with respect to claim 1 for claim 9
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(the broader claim) (Ans. 13). In particular, the Examiner finds that
Kawakami “discloses calculating the playback period between the starting
time and the ending time” (Ans. 10) and “hashing the entire music data
which includes the playback limitations” and “[t]hen the hash values are
compared to see if any alteration has occurred” (Ans. 11). Thus, “[t]he hash
value itself is data and when compared to other hash value (of the data and
its history information) is the same (if not more accurate) as comparing
history data (playtime data)” (id.).
Kawakami discloses a personal computer that controls the playback of
content by computing a hash value of a content-managing music data base
and comparing it with a previously stored hash value (FF 1). Data is
transferred to a portable device including not only the content but also
playback limitation data, start data, and end date (FF 2); wherein, the
playback limitation data includes a set playback period (range) for limiting
the playback of the content (FF 3). When the date is beyond the playback
period, the system deletes the selected content from the content and music
databases and computes the hash value of the entire music data base (FF 4).
A comparison is made of a previously stored hash value and the recently
computed hash value, such that when there is no coincidence (no match)
between the two, the system concludes that the data of the music data base
has been falsified/altered and sends notice to the user of this fact (FF 4).
However, when there is coincidence, the content use (copying) is allowed
and no message is sent to the user (FF 4).
Although the Examiner finds that Kawakami teaches that the playback
period is derived from “the starting time and the ending time” (Ans. 9) and
that the entire music database is hashed including any data necessary for the
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playback limitation (Ans. 11), Kawakami is silent as to more than one
playback period (range) (i.e. determining whether at least two “data use time
information pieces at least partially overlap each other” (claim 9)) that are
compared to determine whether the first and second playback periods “at
least partially overlap each other” (claim 9). Even though there may be one
playback period when a playback limitation exists within the music data
base (FF 3), the comparison occurs between a previously stored hash value
of the entire music database and a newly calculated one and not two ranges
to detect whether they “overlap” (claim 9).
Accordingly, we find that Appellant has shown that the Examiner
erred in rejecting claim 9 under 35 U.S.C. § 102(e) over Kawakami.
Furthermore, independent claims 10-15 having similar claim language stand
with claim 9.
As to independent claim 1, Appellant contends that “[t]he only
comparison that is disclosed in Kawakami is the comparison of the
calculated hash value with the hash values that are stored cumulatively in the
non-volatile memory 34” and, therefore, “[t]he hash value … shown in Fig.
9 … [is] a value obtained by applying a hash function to the contents stored
in the non-volatile memory 34” (App. Br. 28). Appellant argues that “[t]he
function performed by the recited ‘sixth means’, which decides whether
there is at least a partial overlap between the first data use terms and the
second data use terms, is therefore significantly different from the
comparison of hash values disclosed in Kawakami” (id.).
The Examiner relies upon previous findings set forth supra (Ans. 10-
11).
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Similarly, we find that Kawakami does not teach the detection of an
overlap between two data use terms (i.e. a “first data use term” and a
“second data use term” (claim 1) by disclosing that a hash function is
applied to the entire music data base or time limit data base and that the
hashed value is compared with the previously stored hash value, as noted
supra.
Accordingly, we find that Appellant has also shown that the Examiner
erred in rejecting claim 1 under 35 U.S.C. § 102(e) over Kawakami.
Furthermore, independent claims 2-4 having similar claim language and
claims 5-8 (depending from claims 1 and 3) stand with claim 1.

V. CONCLUSION AND DECISION
The Examiner’s rejection of claims 1-15 under 35 U.S.C. § 102(e) is
reversed.

REVERSED

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