Ex Parte Staring et alDownload PDFBoard of Patent Appeals and InterferencesApr 9, 200910011889 (B.P.A.I. Apr. 9, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ANTONIUS ADRIAAN MARIA STARING and FRANCISCUS LUCAS ANTONIUS JOHANNES KAMPERMAN ____________ Appeal 2008-3251 Application 10/011,889 Technology Center 2100 ____________ Decided1: April 10, 2009 ____________ Before JOHN C. MARTIN, LANCE LEONARD BARRY, and ST. JOHN COURTENAY, III Administrative Patent Judges. BARRY, Administrative Patent Judge. DECISION ON APPEAL 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 CFR § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date. Appeal 2008-3251 Application 10/011,889 STATEMENT OF THE CASE The Patent Examiner rejected claims 1, 2, and 4-15, which are all of the pending claims. The Appellants appeal therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). INVENTION The invention at issue on appeal provides secure, super distribution of data stored on a "carrier," i.e., a storage medium. (Spec. 1.) ILLUSTRATIVE CLAIM 1. A method for distributing, in a secure super distribution mode, user data stored on a first recording medium, said method comprising the steps of: copying said user data from said first recording medium to a second recording medium, said first recording medium and said second recording medium each comprising a unique recording medium identifier; storing, on said second recording medium, information required by a service center for granting access rights to said copy of said user data, said information including at least a code value determined from at least said unique recording medium identifiers of said first and second recording mediums; transmitting said stored information to the service center; obtaining, in response to the transmission of said stored information, access rights to said copy of said user data, and additional access information from said service center; storing, on said second recording medium, said access rights and said additional access information; and distributing said second recording medium containing said copy of said user data. 2 Appeal 2008-3251 Application 10/011,889 PRIOR ART Morito U.S. 6,782,190 B1 Aug. 24, 2004 (filed on Sep. 2, 1999) Mochizuki U.S. 6,097,814 Aug. 1, 2000 REJECTIONS Claims 1, 2, and 4-15 stand rejected under 35 U.S.C. § 112, ¶ 1, as lacking an adequate written description. Claims 1, 2, 4-8, and 11-15 stand rejected under 35 U.S.C. § 102(e) as being obvious over Morito. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being obvious over Morito and Mochizuki. WRITTEN DESCRIPTION OF CLAIMS 1, 2, AND 4-15 "Rather than reiterate the positions of parties in toto, we focus on the issues therebetween." Ex parte Katsukawa, No. 2007-0732, 2007 WL 3043602, at *2 (BPAI 2007). The Examiner finds that "[n]owhere in the original specification describes or supports 'distributing said second recording medium containing said copy of said user data' and 'storing, on said second recording medium, said access rights and said additional access information'." (Answer 4.) The Appellants make the following argument. [T]he second data carrier (second recording medium as claimed) is enabled by being provided with all necessary rights and information for the intended use of the second data carrier. Hence, in order for this to occur, the "necessary rights and 3 Appeal 2008-3251 Application 10/011,889 information" must be stored on the second data carrier (second recording medium). (Br. 15.) "Further, as indicated in the specification as filed on page 6, lines 26-28, it is the intention to enable the owner of an original disk 'to make super distributed copies for friends.'" (Id. at 14.) ISSUE Therefore, the issue before us is whether the Appellants have shown error in the Examiner's finding that claims 1, 2, and 4-15 lack an adequate written description. LAW "[T]he test for sufficiency of support . . . is whether the disclosure of the application relied upon 'reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter.'" Ralston Purina Co. v. Far-Mar-Co., 772 F.2d 1570, 1575 (Fed. Cir. 1985) (quoting In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983)). FINDINGS OF FACT ("FF") 1. Claim 1 recites in pertinent part the following limitations: "storing, on said second recording medium, said access rights and said additional access information; and distributing said second recording medium containing said copy of said user data." 2. The original Specification (pp. 7-8) includes the following disclosure. 4 Appeal 2008-3251 Application 10/011,889 [T]his second data carrier is enabled, i.e. it is provided with all necessary rights and information for the intended use of the second data carrier, by transmitting the required super distribution data to the service center 3 where these data are verified and data for enabling are returned to the recorder 2 if the verification has been successful. 3. The original Specification (p. 6) also discloses that "[t]o provide an incentive for the consumer to make super distributed copies for friends, the content owner can decide to provide some kind of benefit . . . ." ANALYSIS Claim 1 specifies storing access rights and additional access information on a second recording medium. (FF 1.) The original Specification explained that a service center returns enabling data, which represent all the necessary rights and information for the intended use of the second data carrier, to a recorder. (FF 2.) The Appellants' explanation that the "second data carrier" of the Specification corresponds to the "second recording media" of the claim (Br. 15) is uncontested. Because the enabling data are returned to the recorder, which stores data onto the second recording media, we find that an artisan would have understood that the recorder stores the enabling data on the second recording media. Claim 1 further specifies distributing the second recording medium. (FF 1.) The original Specification explained that an object of the Appellants' invention was to provide an incentive for a consumer to make super distributed copies for friends. (FF 3.) We agree with the Appellants that the 5 Appeal 2008-3251 Application 10/011,889 disclosure of providing copies provide support for distributing the second recording medium. CONCLUSION Based on the aforementioned facts and analysis, we conclude that the Appellant has shown error in the Examiner's finding that claims 1, 2, and 4- 15 lack an adequate written description. NOVELTY OF CLAIMS 1, 2, 4-8, AND 11-15 When multiple claims subject to the same ground of rejection are argued as a group by appellant, the Board may select a single claim from the group of claims that are argued together to decide the appeal with respect to the group of claims as to the ground of rejection on the basis of the selected claim alone. Notwithstanding any other provision of this paragraph, the failure of appellant to separately argue claims which appellant has grouped together shall constitute a waiver of any argument that the Board must consider the patentability of any grouped claim separately. 37 C.F.R. § 41.37(c)(1)(vii). Here, the Appellants argue claims 1, 2, 4-8, and 11-15, which are subject to the same ground of rejection, as a group. (Br. 18-21). We select claim 1 as the sole claim on which to decide the appeal of the group. The Examiner finds that Morito discloses "a code value determined from at least said unique recording medium identifiers of said first and 6 Appeal 2008-3251 Application 10/011,889 second recording mediums (see col. 13, claim 17 and col. 10, line 42 to col. 11, line 3) . . . ." (Answer 5.) The Appellants make the following argument. According to Morito, the second digital signature (SigKM-1(Sc, A') does not include the first recording medium identifier, i.e. it is not determined by at least the first and second recording medium identifiers, but rather, the determining of the second digital signature is enabled by the verification of the first digital signature. (Br. 21.) ISSUE Therefore, the issue before us is whether the Appellants have shown error in the Examiner's finding that Morito discloses storing, on a second recording medium, information including at least a code value determined from at least the unique recording medium identifiers of first and second recording mediums. LAW "[T]he PTO gives claims their 'broadest reasonable interpretation.'" In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). "Moreover, limitations are not to be read into the claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989)). 7 Appeal 2008-3251 Application 10/011,889 FINDINGS OF FACT 4. Claim 1 recites in pertinent part the following limitations: "information including at least a code value determined from at least said unique recording medium identifiers of said first and second recording mediums . . . ." 5. Morito "relates to copy protection, particularly but not exclusively to an apparatus and method for protecting digital data on a data storage medium from unauthorised [sic] copying." (Col. 1, ll. 6-9.) 6. The Appellants admit that "[i]n Morito, the first digital signature is determined using at least the first recording medium identifier Sd stored on the first recording medium." (Br. 20.) More specifically, the reference explains that a "reading device 22 then reads Sd from the read-only part of the disk 1 (s52) and the [copy control information] CCI generator 23 calculates the digital signature SigKA-1 (Sd, A, KM) at step s53." (Col. 10, ll. 34-37.) 7. The Appellants admit that "the CCI enables the reading of the second recording medium identifier Sc and the generation of the second digital signature using the second recording medium identifier Sc." (Br. 20- 21.) More specifically, Morito explains that "[i]t then calculates the digital signature SigKM-1 (Sc, A') (s75) . . . ." (Col. 10, l. 67 – col. 11, l. 1.) 8 Appeal 2008-3251 Application 10/011,889 8. The reference "at step s76 writes Sd, A, KM, KA, SigKA-1 (Sd, A, KM), A' and SigKM-1 (Sc, A') to the data area 3 of the destination disk 35." (Cool. 11, ll. 1-3.) ANALYSIS Claim 1 specifies that "at least a code value" is determined from at least unique recording medium identifiers of first and second recording mediums. (FF 4.) Giving the claim the broadest, reasonable construction, we construe the qualifying phrase "at least a" to read on plural code values and the claim to read on plural code values determined from at least the unique recording medium identifiers of first and second recording mediums such that the claim is broad enough to read on a first code value determined from a unique recording code identifier of a first recording medium and a second code value determined from a unique recording code identifier of a second recording medium . Consequently, we do not agree with Appellants’ position that the claim requires a code value that is determined from at least the unique recording medium identifiers of the first and second recording mediums. (Br. 19.) Morito determines a first digital signature, SigKA-1 (Sd, A, KM), using at least the first recording medium identifier, Sd, of the first recording medium. (FF 6.) The reference similarly determines a second digital signature, SigKM-1 (Sc, A'), using at least the second recording medium identifier, Sc, of the second recording medium. (FF 7.) We find that both of these digital signatures constitute code values. Because Morito uses the first 9 Appeal 2008-3251 Application 10/011,889 recording medium identifier to determine the first digital signature and the second recording medium identifier to determine the second digital signature, and the digital signatures constitute code values, we find that these code values collectively at least a code value determined from at least the unique recording medium identifiers of first and second recording mediums. CONCLUSION Based on the aforementioned facts and analysis, we conclude that the Appellants have shown no error in the Examiner's finding that Morito discloses storing, on a second recording medium, information including at least a code value determined from at least the unique recording medium identifiers of first and second recording mediums. NONOBVIOUSNESS OF CLAIMS 9 AND 10 The Examiner admits that "Morito is silent as to said service center awards the owner of said first recording medium in response to a completed process of secure super distribution of said user data stored on said first recording medium." (Answer 7.) She makes the following findings regarding Mochizuki. Col. 14, lines 27-40 discloses the benefits to the owner of the optical disc in response to a complete process of secure super distribution. The first award/benefit is that "as an optical disc is distributed at a very low price, illegal duplication is hardly established as a business", thus the software house (owner) does not need to worry about illegal duplication as the optical disc is already distributed at a very low price. The second benefit is "a software house can manage about users, since an optical disc is supplied to a user when a cipher key is requested by the user", 10 Appeal 2008-3251 Application 10/011,889 thus the software house (owner) can control their customer usage based on a cipher key. (Id. at 11.) The Appellants argue that "the cited section of Mochizuki relates to benefits to the user (i.e., the user of a secure super distributed copy), in that the user may enjoy a low price, or the user may save money by only paying for preferred program information." (Br. 22.) ISSUE Therefore, the issue before us is whether the Appellants have shown error in the Examiner's finding that Mochizuki discloses awards to the owner of the first recording medium. LAW The question of obviousness is "based on underlying factual determinations including . . . what th[e] prior art teaches explicitly and inherently . . . ." In re Zurko, 258 F.3d 1379, 1383 (Fed. Cir. 2001) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); In re Dembiczak, 175 F.3d 994, 998 (Fed. Cir. 1999); In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995)). FINDING OF FACT 9. The part of Mochizuki relied on by the Examiner follows. An optical disc is distributed at a low price, since a cost of utilizing program information is charged to an individual program information itself as the same case as the "super distribution system". A user can save money so that the user just pays for preferred program information. Further, as an optical disc is distributed at a very low price, illegal duplication 11 Appeal 2008-3251 Application 10/011,889 is hardly established as a business. Furthermore, a software house can manage about users, since an optical disc is supplied to a user when a cipher key is requested by the user. (Col. 14, ll. 27-36.) ANALYSIS We disagree with the Examiner that the discouragement of illegal duplication or the ability to control customer usage (FF 9) constitute awards. CONCLUSION Based on the aforementioned facts and analysis, we conclude that the Appellants have shown error in the Examiner's finding that Mochizuki discloses awards to the owner of the first recording medium. ORDER We reverse the rejection of claims 1, 2, and 4-15 under § 112 and the rejection of claims 9 and 10 under § 103(a). In contrast, we affirm the rejection of claims 1, 2, 4-8, and 11-15 under § 102(e). No time for taking any action connected with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 12 Appeal 2008-3251 Application 10/011,889 AFFIRMED-IN-PART erc PHILIPS INTELLECTUAL PROPERTY & STANDARDS P.O. BOX 3001 BRIARCLIFF MANOR NY 10510 13 Copy with citationCopy as parenthetical citation