Ex Parte Jin et al

Patent Trial and Appeal Board

Nov 25, 2016

12038773 (P.T.A.B. Nov. 25, 2016)

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.
12/038,773 02/27/2008 HongxiaJin ARC920070093US1/IBI-02301 6265
112586 7590 11/29/2016
Foley Hoag LLP w/IBM Almaden Office
1540 Broadway
23rd Floor
New York, NY 10036
EXAMINER
GRACIA, GARY S
ART UNIT PAPER NUMBER
2491
NOTIFICATION DATE DELIVERY MODE
11/29/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
Patentdocketing@foleyhoag.com
pair_foleyhoag @ firsttofile.com
j ferrigno @ foleyhoag .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HONGXIA JIN and JEFFREY BRUCE LOTSPIECH
Appeal 2015-005243
Application 12/038,773
Technology Center 2400
Before JEAN R. HOMERE, JEFFREY S. SMITH, and
BRUCE R. WINSOR, Administrative Patent Judges.
WINSOR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the non-final
rejection of claims 21 and 23, which constitute all of the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b). Claims 1—20,
22, and 24 are cancelled.2 App. Br. 6, 17—18.
We reverse.
1 The real party in interest identified by Appellants is International Business
Machines Corporation. App. Br. 4.
2 In an apparent typographical error, Appellants indicate claim 21 is both
pending and cancelled. See App. Br. 6. We treat claim 21 as pending and
on appeal.
Appeal 2015-005243
Application 12/038,773
RELATED APPEALS
The instant appeal is related to Appeal 2015-005246, pertaining to
Application 12/131,076. App. Br. 5. Appeal 2015-005246 is decided
concurrently herewith.
STATEMENT OF THE CASE
Appellants’ disclosed “invention generally relates to . . . protecting
digital content from unauthorized use, and particularly to . . . identifying
devices involved in piracy of digital content and revoking secret keys used
to pirate protected digital content.” Spec. 11. Claim 21, which is
illustrative, reads as follows:
21. A method for a media device to decrypt protected
content on media, said content being enabled to identify device
keys in a compromised media device, comprising:
processing a tree-based media key block to yield an initial
value, wherein the tree-based media key block that
has been divided into subtrees and a media device
is associated with one of said subtrees;
executing a key transformation program to transform the
initial value into a media key variant, the media
comprising said program;
in response to the executing, the media device returning to
the transformation program the media device's
subtree identity;
deriving title keys using the media key variant;
decrypting said content using the title keys; and
wherein said program: executes on said device when said
device attempts to decrypt said content, transforms
initial values into media key variations, and
identifies to a content protection licensing agency
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Application 12/038,773
which subtree among said subtrees is associated
with said device.
The Examiner relies on the following prior art in rejecting the claims:
Lotspiech et al. US 2002/0133701 A1
(“Lotspiech ’701”)
Ishiguro et al. US 2003/0105956 Al
(“Ishiguro”)
Bell et al. US 2004/0156503 Al
(“Bell”)
Doherty et al. US 2009/0092249 Al
(“Doherty”)
Sept. 19, 2002
June 5, 2003
Aug. 12, 2004
Apr. 9, 2009
Claims 21 and 23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Doherty, Lotspiech ’701, Bell3, and Ishiguro. See Non-
Final Act. 4—11.
Rather than repeat the arguments here, we refer to the Briefs (“App.
Br.” filed Nov. 14, 2014; “Reply Br.” filed April 13, 2015) and the
Specification (“Spec.” filed Feb. 27, 2008) for the positions of Appellants
and the Non-Final Office Action (“Non-Final Act.” mailed July 8, 2014) and
Examiner’s Answer (“Ans.” mailed Feb. 12, 2015) for the reasoning,
findings, and conclusions of the Examiner.
ISSUE
The issue presented by Appellants’ contentions is whether the
combination of Doherty, Lotspiech ’701, and Ishiguro teaches or suggests
“protected content on media,... the media comprising said [key
3 Although included in the summary ground of rejection (Non-Final Act. 4),
Bell is not discussed or applied in the detailed rejections of claims 21 and 23
(see generally Non-Final Act. 4—11). See App. Br. 11.
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Appeal 2015-005243
Application 12/038,773
transformation] program” (herein the “disputed limitation”), as recited in
claim 21.
ANALYSIS
The Examiner finds Doherty teaches the disputed limitation. Non-
Final Act 5—6 (citing Doherty || 7, 29, Fig. 2); see also Ans. 2—10
(additionally citing Doherty || 8—9, 27—28, 30-32, Figs. 1, 3; Spec. 41,
62). The Examiner explains that “[t]he key transformation program is
generated during runtime of the DVD and stored/used in the DVD.” Non-
Final Act. 6. The Examiner further explains as follows:
The application layer (which may be HDi or BD-J) which
is stored on the HD DVD/Blu-Ray Disc, has an authoring
environment that allows the procedural code and the security
layer (i.e., key transformation program code) to perform the key
transformation. The application layer and the security layer exist
within the HD DVD/Blu-Ray Disc.
Ans. 6 (emphasis added). In other words, the Examiner maps the recited key
transformation program to the process that transforms of the Media Key Km
(Doherty Fig. 3) to the Soft Media Key Ksm (id. ) that occurs in Doherty’s
security layer 320 (id.), i.e., to the Advanced Encryption Standard One-Way
Function AES-G (id.).
Appellants argue, inter alia, that Doherty does not teach or suggest
that the key transformation program is located on the same media with the
protected content. See generally App. Br. 12—15; Reply Br. 4—7. Accepting,
that Doherty’s AES-G teaches a key transformation program, we
nonetheless agree with Appellants.
We first construe the disputed limitation. Claim construction is an
issue of law that we review de novo. Cordis Corp. v. Boston Scientific
Corp., 561 F.3d 1319, 1331 (Fed. Cir. 2009). We agree with Examiner that
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Appeal 2015-005243
Application 12/038,773
the term “[m]edia is the plural version of medium, so it can certainly include
multiple media.” Ans. 3. We also agree with the Examiner that the memory
of a media device falls within the broadest reasonable interpretation of
“media.” See Ans. 6. However, we do not agree that the term “media” can
be read so broadly as to encompass “all media in a certain device, all media
owned by a person, or even all media on earth.” Ans. 3. Rather, the media
recited in the claim is media on which there is protected (i.e., encrypted)
content (“protected content on media”). The claim further recites that “the
media [on which there is protected content] comprising said [key
transformation] program.” In other words, the claim requires that the same
media have both protected content and the key transformation program.
That the media may comprise more than one item of media does not change
the claim’s limitation to media on which both the protected content and the
key transformation program are present.
We discuss the disputed limitation vis-a-vis Doherty by reference to
Doherty’s Figure 2, reproduced below.
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Application 12/038,773
Doherty’s Figure 2.
Doherty’s Figure 2 above “shows details of the media content
encryption and decryption under AACS” (Doherty 112) illustrating a
licensed replicator that encrypts prerecorded media content onto an optical
disc 131 {id. 120) and a licensed player 150 that unlocks the prerecorded
encrypted content on the optical disc 131 {id. 121).
Although the Examiner asserts that “[t]he application layer and the
security layer exist within the HD DVD/Blu-Ray Disc” (Ans. 6), the
Examiner does not point to, nor do we find, any teaching of Doherty that the
AES-G code 238 (Doherty Fig 2) is located on optical disc 131 {id.), which
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Application 12/038,773
includes encrypted titles 214 (id.) (i.e., protected content). Therefore,
Doherty’s optical disc 131 does not teach or suggest the disputed limitation.
Turning to Doherty’s licensed player 150 (Doherty Fig 2) (i.e., media
device), Doherty teaches that AES-G is located in licensed player 150,
which one of ordinary skill in the art would understand to be located in the
player’s memory, i.e., on media. However, we find nothing in Doherty that
teaches that the encrypted titles 214 are placed into the memory of licensed
player 150. To be sure, Doherty (Fig. 2) does illustrate that “titles” are
located within the licensed player 150, which one of ordinary skill would
understand to suggest that the titles are in the memory of the licensed player
150, but these “titles” are decrypted titles and not the encrypted titles 214,
i.e., not the protected content. Therefore, Doherty’s media player 150 does
not teach or suggest the disputed limitation.
We are persuaded that the Examiner errs in finding that Doherty,
when combined with Lotspiech ’701 and Ishiguro, teaches or suggests the
disputed limitation. Therefore, we do not sustain the rejection of claim 21
and claim 23, which recites a limitation substantially similar to the disputed
limitation and was rejected on substantially the same bases as claim 21 (see
Non-Final Act. 11).
DECISION
The decision of the Examiner to reject claims 21 and 23 is reversed.
REVERSED
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