Ex Parte Xue

Patent Trial and Appeal Board

Jan 29, 2013

10666889 (P.T.A.B. Jan. 29, 2013)

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.
10/666,889 09/17/2003 Xin Xue SONY-26800 9090
28960 7590 01/29/2013
HAVERSTOCK & OWENS LLP
162 N WOLFE ROAD
SUNNYVALE, CA 94086
EXAMINER
TO, BAOTRAN N
ART UNIT PAPER NUMBER
2435
MAIL DATE DELIVERY MODE
01/29/2013 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 XIN XUE
____________

Appeal 2010-011812
Application 10/666,889
Technology Center 2400
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
CARLA M. KRIVAK, Administrative Patent Judges.

DIXON, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-011812
Application 10/666,889

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-44. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to downloading content based on
authentication. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method of downloading content from a server to
an electronic device, comprising:

storing authentication data on a removable memory,
wherein the authentication data includes a predetermined level
of content access;

accessing the server with the electronic device;

authenticating the removable memory by reading the
authentication data from the removable memory to determine
the predetermined level of content access; and

downloading the content from the server to the
removable memory according to the predetermined level of
content access.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hori

Howard
US 2004/0010467 A1

US 2004/0103064 A1
Jan. 15, 2004
(PCT filed Mar. 28,
2001)

May 27, 2004
(filed Nov. 26, 2002)
Appeal 2010-011812
Application 10/666,889

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REJECTION
Claims 1-44 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Howard and Hori.

ANALYSIS
While Appellant nominally argues each independent claim separately
with its respective dependent claims (see App. Br. 10-12), the arguments for
each group of claims merely refer back to the same general arguments (App.
Br. 7-9). Thus, we treat claims 1-44 together as one group.
Appellant contends that neither reference teaches the claimed
invention (App. Br. 7-8). Appellant also contends that the Examiner’s
asserted motivation for combining Howard and Hori “is nonexistent because
there is no indication in Hori that downloading the content to the removable
memory instead of the user PC would, on its own, prevent distributed
copyrighted data from being replicated without permission of the copyright
owner in Howard” (App. Br. 8). In other words, “[a]n inventor would not be
motivated to combine two prior art references in order to achieve copyright
protection benefits, if the asserted combination would not actually result in
those benefits” (App. Br. 9). We disagree.
Although Appellant contends that neither reference teaches the
claimed invention (App. Br. 7-8), Appellant does not contend that the
collective teachings of Howard and Hori fail to disclose all the limitations of
the claimed invention. Thus, the appeal turns on whether the Examiner’s
combination of Howard and Hori is proper. Appellant argues that the
Examiner’s motivation for combining Hori’s feature of downloading content
to a memory card with Howard’s system—“it would prevent distributed
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Application 10/666,889

4
copyrighted data from being replicated without permission of the copyright
owner (Hori paragraph 0010)” (Ans. 5, 13)—is not sufficient because simply
downloading content to a memory card does not by itself provide the
copyrighted data protection of Hori (see App. Br. 8-9). Specifically,
Appellant argues that
Hori’s prevention of impermissible replication relies on the
entirety of the invention of Hori, including a complex data
storage structure that comprises a plurality of authentication
data hold means, a select means, a key hold means, a first
decryption means, a session key generation means, a session
key encryption means, and a session key decryption means. In
other words, even if Howard downloaded the content to the
removable memory instead of the PC (as taught by Hori),
Howard would be no more protected from copyright violations.

(App. Br. 8). However, we find that where Hori provides an explicit
motivation to protect copyrighted data (Hori, ¶ 10) and Hori teaches all the
features necessary to perform copyrighted data protection, as listed in
Appellant’s argument above, including downloading encrypted content to
the memory card (Hori, ¶¶ 65, 171), one of ordinary skill in the art would
have included all the necessary encryption features of Hori’s system in the
combined system of Howard and Hori to actually achieve the copyrighted
data protection that Hori suggests. Moreover, Appellant does not argue that
the motivation itself is invalid—that one would not have wanted to provide
copyrighted data protection in Howard’s system. Accordingly, we are not
persuaded that the Examiner’s motivation for combining the references is
insufficient.
Additionally, Appellant’s argument that such combination would have
impermissibly changed the principle of operation of Howard (App. Br. 9) is
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Application 10/666,889

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not persuasive. Howard is primarily concerned with gaining access to online
content by authenticating a smart card, i.e., a “removable memory,” inserted
in a PC before downloading the content to the PC (see Howard, Abstract; ¶¶
18-21). The storage location of the downloaded content is not critical in
Howard’s system. Therefore, modifying Howard in view of Hori so that
content would be downloaded to the removable memory does not alter
Howard’s general principle of authentication before download. Rather,
combining Hori with Howard merely adds another security feature to
Howard’s system.
We are therefore not persuaded that the Examiner erred in rejecting
claims 1-44.

CONCLUSION OF LAW
The Examiner did not err in rejecting claims 1-44 under 35 U.S.C.
§ 103(a).

DECISION
For the above reasons, we affirm the rejection under § 103 of claims
1-44.
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). See 37
C.F.R. § 41.50(f).

AFFIRMED

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