Ex Parte Thomas et al

Board of Patent Appeals and Interferences

Sep 29, 2010

10678936 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte DAVID ANDREW THOMAS, EDWARD H. PERRY,
SUJATA BANERJEE, PUNEET SHARMA, AMY CSIZMAR DALAL,
and SUNG-JU LEE
________________

Appeal 2009-006643
Application 10/678,936
Technology Center 2400
________________

Before ST. JOHN COURTENAY III, STEPHEN C. SIU, and
DEBRA K. STEPHENS, Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 10/678,936

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-10, 28-37, and 55-58. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
Invention
The invention relates to methods and systems for downloading digital
information (Spec. 1).
Claim 1 is illustrative:
1. A method for transferring files, comprising:
receiving a request to transfer a file;
locating the requested file stored in a memory;
computing a unique identifier corresponding to the
requested file;
choosing a first key, K1, wherein the first key, K1, is
unique to the particular transfer of the requested file;
encrypting the first key, K1, and the unique identifier
with a second key, K2, to generate a first value;
encrypting the requested file with the first key, K1, to
generate a second value; and
transferring the first and second values.
References
The Examiner relies on the following references as evidence in
support of the rejection:
Van Der Vleuten US 2002/0076043 A1 Jun. 20, 2002
Higashi US 2002/0107806 A1 Aug. 8, 2002
Carpentier US 6,807,632 B1 Oct. 19, 2004
(filed Jan. 21, 1999)
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Bennett US 6,963,923 B1 Nov. 8, 2005
(filed Feb. 10, 1997)
Lyle US 7,242,766 B1 Jul. 10, 2007
(filed Nov. 21, 2001)
Rejections
Claims 1-4, 7, 28-31, and 34 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Higashi and Lyle.
Claims 5, 6, 32, and 33 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Higashi, Lyle, and Bennett.
Claims 8-10 and 35-37 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Higashi, Lyle, and Carpentier.
Claims 55-58 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Higashi, Lyle, and Van Der Vleuten.
ISSUE
Appellants submit that neither Higashi nor Lyle teaches or suggests
“using Appellants’ claimed key K2 to encrypt a first key K1 having the
features recited in claims 1 and 28” (App. Br. 8).
Issue: Did the Examiner err in finding that Higashi and Lyle would
have taught or suggested choosing a first key, wherein the first key is unique
to a particular transfer of a requested file and encrypting the first key and a
unique identifier with a second key to generate a first value?
FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence:
1. Higashi discloses a content information generation unit that
“generates the content information (LT) . . . . the content
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information generation unit 170 acquires the content key 130
corresponding to the content ID . . . and generates LT which
includes this content key” (¶ [0080]).
2. Higashi discloses that “LT 600 generated by the content
information generation unit 170 is comprised of the LT
header 610” (¶ [0111]).
3. Higashi discloses that “LT header 610 is comprised of . . . content
ID 614 that shows a content ID of the content associated with this
LT” (¶ [0112]).
4. Higashi discloses that a “content information encryption unit 175
encrypts the content information [LT] . . . . [u]sing public key
cryptography, [content information LT] may be encrypted by the
public key of the user” (¶¶ [0081-83]).
5. Lyle discloses a movie delivery transaction in which
the consumer sends . . . a request to view the movie . . . .
the request is received by content authority 16 . . . . if the
request is approved, content source 11 is informed . . . .
In response to being informed of an approved request,
content source 11 . . . send[s] a packaged version of the
requested content to receiver 15 . . . .
(Col. 21, l. 63 to col. 22, l.28).
6. Lyle discloses that the “packaged content is encrypted in a manner
that requires a session key (that varies from one transaction to the
next) in order to decrypt it” (col. 22, ll. 39-42).
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PRINCIPLES OF LAW
Claim interpretation
“In the patentability context, claims are to be given their broadest
reasonable interpretations. . . . [L]imitations are not to be read into the
claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted).
Obviousness
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. of Kansas City,
383 U.S. 1, 17-18 (1966). One cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
ANALYSIS
Appellants argue the claimed encryption of a first key by a second key
is not taught or suggested by the prior art. Based on Appellants’ arguments
in the Appeal Brief, we will decide the appeal with respect to issue 1 on the
basis of claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Higashi teaches the generation of content information that includes a
content key (FF 1). The content information also includes a header (FF 2)
that includes a content ID (FF 3). Higashi also teaches encryption of the
content information using public key cryptography, where the content
information may be encrypted by a user’s public key (FF 4). Lyle teaches a
requested file (requested content) that is delivered to a receiver as packaged
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content within a transaction (FF 5). Lyle also teaches encrypting the
packaged content in a manner that requires a session key that varies from
one transaction to the next (FF 6). Therefore, the combination of Higashi
and Lyle would have taught or suggested choosing a first key (content or
session key), wherein the first key is unique to a particular transfer of a
requested file (varies from one transactions to the next) and encrypting the
first key (the content or session key included in the content information) and
a unique identifier (a content ID included in the content information header)
with a second key (user’s public key) to generate a first value (encrypted
data).
Appellants argue that Lyle’s teachings and suggestions are
inapplicable because “the session key of Lyle would have been used to
replace the content key and the public key of Higashi” (App. Br. 9).
However, the Examiner relies on Lyle for the limitation of a key that is
unique to a particular transfer of a requested file (Ans. 3). The Examiner
relies on Higashi for the other limitations (Ans. 2-3). Appellants cannot
demonstrate nonobviousness by attacking Lyle alone when the rejections are
based on the combined teachings of Lyle and Higashi.
Appellants further argue that “Appellants’ claimed ‘first key, K1’ . . .
will remain valid over multiple transactions with different servers” (App
Br. 9). However, the claim requires that “first key, K1, is unique to the
particular transfer of the requested file” (emphasis added). The limitation,
given a reasonably broad interpretation, encompasses a particular transfer
that takes place within a single session. As discussed, Lyle teaches sending
a requested file within a transaction (FF 5), where an encryption key used in
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delivering package content varies from one transaction to the next (FF 6).
Thus Lyle teaches a first key (encryption key) that is unique (that varies) to a
particular transfer (from transaction to transaction, where each transaction
can include a transfer) of a requested file.

CONCLUSIONS OF LAW
Based on the findings of facts and analysis above, we find no
evidence persuasive of error in the Examiner’s finding that Higashi and Lyle
would have taught or suggested choosing a first key, wherein the first key is
unique to a particular transfer of a requested file and encrypting the first key
and a unique identifier with a second key to generate a first value.
For at least these reasons, we are not persuaded of error with respect to this
issue in the Examiner’s 35 U.S.C. § 103(a) rejections of claims 1-4, 7, 28-
31, and 34. Appellants did not argue claims 5, 6, 32, and 33 rejected for
obviousness over Higashi, Lyle, and Bennett; claims 8-10 and 35-37 rejected
for obviousness over Higashi, Lyle, and Carpentier; and claims 55-58
rejected for obviousness over Higashi, Lyle, and Van Der Vleuten
separately, but instead relied on the arguments set forth for claim 1 (App. Br.
9-10). Accordingly, we are not persuaded of error in the Examiner’s 35
U.S.C. § 103(a) rejections of claims 5, 6, 8-10, 32, 33, 35-37, and 55-58.

DECISION
We affirm the Examiner’s decisions rejecting claims 1-10, 28-37, and
55-58 under 35 U.S.C. § 103(a).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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