Ex Parte Staring et al

Board of Patent Appeals and Interferences

Apr 9, 2009

10011889 (B.P.A.I. Apr. 9, 2009)

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
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Decided1: April 10, 2009
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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.
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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
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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.
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[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
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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
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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)).

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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.)

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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
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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",
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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
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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).
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AFFIRMED-IN-PART

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PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
BRIARCLIFF MANOR NY 10510

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