Ex Parte Hori et al

Board of Patent Appeals and Interferences

Mar 20, 2012

10416523 (B.P.A.I. Mar. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YOSHIHIRO HORI, TORU KAMIMURA, SHINYA
MIYAZONO, TAKAHISA HATAKEYAMA, TAKAYUKI HASEBE,
MASATAKA TAKAHASHI, TAKASHI TSUNEHIRO, and YOSHIO
OHMORI
____________

Appeal 2009-014412
Application 10/416,523
Technology Center 3600
____________

Before, MURRIEL E. CRAWFORD, HUBERT C. LORIN and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014412
Application 10/416,523

2
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 24-46. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

Claim 24, reproduced below, is representative of the subject matter on
appeal.
24. A data terminal device for lending and returning encrypted
contents data obtained by encrypting contents data and a license for
decrypting said encrypted contents data to obtain the original contents
data or for lending and returning said license, to and from a data
recording device, the data terminal device comprising:
a storage unit storing said encrypted contents data, said license and
lending information which is information for administrating said
lending; a control unit; and an interface controlling data exchange
between said data recording device and said control unit, wherein in
said lending out, said control unit receives an inherent ID capable of
specifying said data recording device and allocated inherently to each
data recording device from said data recording device through said
interface, generates a lending ID inherent to each lending and for
specifying a lending license for lending said encrypted contents data
and said license or for lending said license, generates a lending license
including said generated lending ID and for decrypting said encrypted
contents data to obtain the original content based on said license
stored in said storage unit, transmits the generated lending license or
said lending license and said encrypted contents data to said data
recording device through said interface, and adds said received
inherent ID and said generated lending ID to said lending information
while associating said received inherent ID with said generated
lending ID, and in said return, when said control unit checks that said
inherent ID is received from said data recording device through said
interface, the received inherent ID coincides with the inherent ID
included in said lending information, and that the lending license
including said lending ID associated with said inherent ID included in
said lending information is recorded in said data recording device,
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Application 10/416,523

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said control unit returns said lending license recorded on said data
recording device or said lending license and said encrypted contents
data decryptable based on said lending license from said data
recording device, and deletes the lending ID and the inherent ID
corresponding to said returned lending license from said lending
information.

The Examiner relies upon the following as evidence of
unpatentability:
Stefik US 5,638,443 Jun. 10, 1997

The Examiner rejected claims 24-46 under 35 U.S.C. § 103(a) over
Stefik.
ANALYSIS
Each of independent claims 24 and 37 requires:
transmitting the generated lending license or said lending license
and said encrypted contents data to said data recording device through said
interface, and
adding said received inherent ID and said generated lending ID
to said lending information while associating said received inherent ID with
said generated lending ID….
The Examiner found that this limitation is disclosed by Stefik at:
col. 34, lines 17-47; col. 6, lines 38-48 (Answer 4); and Figure 2 at 205
(Answer, Table 1 p. 4).
We do not find where the above noted limitation is disclosed or is
made obvious by Stefik at the designated portions of Stefik.
Instead, we find at:
ï‚· col. 34, lines 17-47, Stefik only discloses a copy transfer, wherein a
copy count is discussed in detail;
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Application 10/416,523

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ï‚· at col. 6, lines 38-48, Stefik only discloses checking usage rights to
grant or deny access to the content, but does not disclose what IDs are
used to cause the rights to be granted or denied; and
ï‚· Figure 2 Stefik only discloses element 205 as generally a transaction
protocol without any disclosure of what the protocol involves (col. 6,
ll. 66-67).
As is clear from the above points, Stefik does not disclose, or make
obvious or inherent, transmitting the generated lending license or said
lending license and said encrypted contents data to said data recording
device through said interface, [and] adding the received inherent ID and the
generated lending ID to the lending information while associating the
received inherent ID with the generated lending ID.
Therefore, we will not sustain the rejection of independent claims 24
and 37; and claims 25-36 which depend from claim 24, and claims 38-46
which depend from claim 37.

REVERSED

MP