Ex Parte Browning

Board of Patent Appeals and Interferences

Apr 24, 2010

10445161 (B.P.A.I. Apr. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JAMES V. BROWNING
____________

Appeal 2009-005926
Application 10/445,161
Technology Center 2400
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Decided: April 24, 2010
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Before JOHN A. JEFFERY, THU A. DANG, and STEPHEN C. SIU,
Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-19 and 21-29. Claim 20 has been cancelled. Br. 12.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Application 10/445,161

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STATEMENT OF THE CASE
Appellant invented a system for installing a security software code to
a file that executes an action. See generally Spec. 1-2. We reproduce claim
1 below:
1. A method comprising:

installing security software code to a file to perform at least
limiting reading of the file to a predetermined rate; and

executing the security software code to limit reading of the file
to the predetermined rate.

The Examiner relies on the following as evidence of unpatentability:
Downs US 6,226,618 B1 May 1, 2001

Loguinov US 2002/0181506 A1 Dec. 5, 2002

Hirai US 6,839,503 B1 Jan. 4, 2005
(filed Dec. 23, 1999)

Outten US 7,024,466 B2 Apr. 4, 2006
(filed Apr. 6, 2001)

THE REJECTIONS
(1) The Examiner rejected claims 1-5, 7-15, 17, 19, 21-24, 26, and
281 under 35 U.S.C. § 103(a) as unpatentable over Downs and Hirai. Ans.
3-14.2

1 Although the Examiner mistakenly includes cancelled claim 20 in the
rejection’s heading (Ans. 3), we deem this error harmless.
2 Throughout this opinion, we refer to: (1) the Appeal Brief filed September
30, 2007; the Examiner’s Answer mailed December 14, 2007; and (3) the
Final Office Action mailed May 29, 2007.
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(2) The Examiner rejected claims 6, 18, and 29 under 35 U.S.C.
§ 103(a) as unpatentable over Downs, Hirai, and Loguinov. Ans. 14-16.
(3) The Examiner rejected claims 16, 25, and 27 under 35 U.S.C.
§ 103(a) as unpatentable over Downs, Hirai, and Outten. Ans. 16-17.

CLAIM GROUPING
Regarding the § 103 rejection over Downs and Hirai, Appellant
argues independent claims 1, 13, and 21 as a group. Br. 5-8. Appellant does
not discuss dependent claims 2-5, 7-12, 14, 15, 17, 19, 22-24, 26, and 28.
See generally Br. Accordingly, we group all these claims together and select
independent claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii).
As for the remaining § 103 rejections, Appellant relies on the
arguments for independent claims 1, 13, and 21. Br. 3-4.

OBVIOUSNESS REJECTION OVER DOWNS AND HIRAI
Regarding representative independent claim 1, the Examiner finds that
Downs teaches installing a security code within a file, but not a security
code that limits reading of a file to a predetermined rate and executing the
security code to limit reading of the file to that rate. Ans. 3. The Examiner
relies on Hirai to teach these missing limitations, and provides several
reasons for combining Hirai’s teaching with Downs. Ans. 19; Final Rej. 5.
Appellant argues that there is no proper reason to combine Hirai with
Downs. App. Br. 5-8. Appellant contends the Examiner reason to modify
Downs is ascribed to Downs alone. Br. 5. Appellant also asserts that
Downs already inhibits illegal copying, including numerous copies without
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degradation, and, thus, there is no reason for an ordinarily skilled artisan to
modify Downs to include Hirai’s copy prevention features. Br. 6-8.
The issue before us, then, is as follows:

ISSUE
Under § 103, has the Examiner erred in rejecting claim 1 by
combining Hirai with Downs to teach: (1) installing a security software code
to a file that limits reading of the file to a predetermined rate, and (2)
executing the code to limit the file reading rate?

FINDINGS OF FACT (FF)
(1) Downs’ system protects against obtaining copies of data. Data is
provided securely to an end user through an encryption system that includes
using public and private keys to decrypt data. Downs, Abstract; col. 3, ll.
41-55; col. 6, l. 36 – col. 7, l. 40.
(2) Downs discusses an end-user device 109 having an end-user
player application 195. The application 195 embeds a digital copy/play code
in the content’s copy 113 defining the allowable number of secondary copies
and play backs. Downs, col. 7, ll. 41-45; col. 21, ll. 64-65; Figs. 1A, D.
(3) Downs discloses digital watermarking technology used to: (a)
generate the digital code; (b) keep the code hidden from another end-user
player application 195; and (c) make the code resistant to attempted
alteration. Downs, col. 7, ll. 45-48; Fig. 1D.
(4) Hirai explains, when high rate data copying is allowed, a user can
produce many copies in a very short time. In this scenario, copyright
protection may not be achieved. Hirai, col. 2, ll. 40-45.
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(5) Hirai teaches a copyright protection system that is stricter with
copying, but also balances profits and losses between the copyright
proprietor and a user. Hirai, col. 2, l. 45 – col. 3, l. 15.
(6) Hirai’s system includes an encryption authentication section 13 in
a reproduction machine 10 and a system control section 16 in a recording
machine 30 that uses a cryptographic key for authentication. Hirai, col. 4, l.
66 – col. 5, l. 45; Fig. 2.
(7) Hirai further teaches a transfer and recording control system that
permits copying at either a normal copying rate (normal speed reproduction)
or a high copying rate (multiple speed reproduction). Hirai’s control section
16 determines the copying rate at steps S103 and S114 by examining a
copying instruction. Hirai, col. 6, ll. 51-55; col. 7, ll. 52-55; Fig. 3.
(8) Hirai permits a high copying rate in certain circumstances.
Otherwise, copying is permitted at a normal rate (e.g., left arrow between
S114 and S116) or not at all (e.g., at S108-109). The user must pay a
predetermined charge to obtain a high copying rate which is authenticated at
S115. Hirai, col. 2, l. 66 – col. 3, l. 9; col. 6, ll. 19-20; col. 6, l. 49 – col. 7, l.
5; col. 7, l. 33 – col. 8, l. 40; Fig. 3.
(9) Hirai teaches including additional information within the copied
signal. Such information includes: (1) “copying is permitted once,” and (2)
“copying is inhibited.” Hirai, col. 7, ll. 25-29.

PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073-74 (Fed. Cir. 1988).
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“[T]he examiner bears the initial burden, on review of the prior art or on any
other ground, of presenting a prima facie case of unpatentability.” In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[T]here must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (internal quotation marks and citations omitted).

ANALYSIS
Based on the record before us, we find no error in the Examiner’s
obviousness rejection of representative independent claim 1. Downs
discloses a process that provides data or files to a user securely through an
encryption system that requires keys for decryption. See FF 1. To be sure,
this process protects against unlicensed users from obtaining a file copy. See
id. However, Hirai suggests that high rate copying can occur even in a
secure encryption copying system. See FF 4-6. Hirai also recognizes that a
user can produce many copies in such a system in a very short time, running
contrary to protecting its copyright. See FF 4. To counter this problem,
Hirai teaches a copyright protection system that controls the copying rate
within an encryption system. See FF 5-8.
Specifically, Hirai’s system has a control section which determines
the requested copy rate by examining a copying instruction. See FF 7. A
high transfer rate is subsequently permitted when a fee is paid. FF 8. Thus,
in other scenarios, Hirai’s transfer rate limits the reading of a file to a
predetermined rate (e.g., a normal rate or a rate of zero when copying is
prohibited). See FF 7-8. Hirai therefore teaches a protection system that
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complements and improves Downs’ system similarly by being stricter with
copying while balancing profits and losses between a copyright owner and a
user (FF 5). See KSR, 550 U.S. at 417.
Downs also discusses an end-user device with a player application
that embeds a digital code (e.g., allowable number of copies) in file content
113. FF 2. Downs thus teaches including a security code within a file
related to copying and playing. See id. Because Hirai’s copying instruction
defines the desired copying rate (FF 7) and relates to copying, Downs also
suggests including such information as part of the security code within a
file’s content. See FF 2. Such an inclusion would keep the code hidden
from other end-user applications that a user may attempt to use to make a
high speed, unauthorized copies. See FF 3. Additionally, while Hirai does
not explicitly discuss security codes, Hirai teaches that copying information,
such as permitting copying, may be included in a transferred copied signal.
See FF 9. Using Hirai’s suggestion, an ordinarily skilled artisan would have
further recognized including this copying information as part of Downs’
signal or file content. See id. Combining these teachings predictably yields
no more than an improved copyright protection system that generates files
with a copy/play security code hidden to other end-user applications (FF 3)
that, in addition to limiting the number of copies and playbacks (FF 2), also
limits the file’s reading rate (FF 7-8). Such an enhancement is tantamount to
the predictable use of prior art elements according to their established
functions—an obvious improvement. See KSR, 550 U.S. at 417.
For the foregoing reasons, Appellant has not shown error in the
Examiner’s rejection of representative claim 1, and claims 2-5, 7-15, 17, 19,
21-24, 26, and 28 which fall with claim 1.
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Application 10/445,161

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REMAINING OBVIOUSNESS REJECTIONS
Because Appellant relies on the arguments of independent claims 1,
13, and 21 for dependent claims 6, 16, 18, 25, 27, and 29 (Br. 3-4), we are
not persuaded by these arguments for the reasons noted above. We therefore
sustain the § 103 rejections of these dependent claims.

CONCLUSION
The Examiner did not err in rejecting claims 1-19 and 21-29 under
§ 103.

ORDER
The Examiner’s decision rejecting claims 1-19 and 21-29 is affirmed.
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

pgc

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