Ex Parte Nagai et al

Patent Trial and Appeal Board

Nov 26, 2014

11142032 (P.T.A.B. Nov. 26, 2014)

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.
11/142,032 06/01/2005 Norihiro Nagai 09812.0447-01000 7699
22852 7590 11/26/2014
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
MALHOTRA, SANJEEV
ART UNIT PAPER NUMBER
3667
MAIL DATE DELIVERY MODE
11/26/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NORIHIRO NAGAI,
AKIRA KURIHARA,
YOSHIMICHI KITAYA,
YOSHITOMO OSAWA,
NAOMI URANO,
MASAO MORITA, and
TOSHIHARU FUKUI
____________

Appeal 2013-000417
Application 11/142,032
Technology Center 3600
____________

Before ANTON W. FETTING, BIBHU R. MOHANTY, and
MICHAEL W. KIM, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 13–24 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2013-000417
Application 11/142,032

2

THE INVENTION
The Appellants’ claimed invention is directed to a digital rights
management system for CD’s (Spec. 1:9–25). Claim 13, reproduced below
with the numbering in brackets added, is representative of the subject matter
on appeal.
13. A non-transitory information recording medium
comprising:
[1] a first data storage area storing copy-protected
content; and
[2] a second data storage area storing encrypted content,
wherein:
[3] identification data unique to the information
recording medium is obtained by a client application and
transmitted to a license management system, wherein the
identification data are pre-determined for the information
recording medium;
[4] content usage right data are issued by the license
management system in response to the identification data based
on predetermined content usage conditions and transmitted to
the client application; and
[5] the encrypted content is decrypted in response to the
content usage right data.

THE REJECTIONS
The following rejections are before us for review:
Claims 13–24 are rejected under 35 U.S.C. § 102(e) as anticipated by
Deng (US 6,711,553 B1, iss. Mar. 23, 2004).
Claims 13–24 are alternatively rejected under 35 U.S.C. § 103(a) as
unpatentable over Deng and Lambert (US 2009/0089398 A1, pub. Apr. 2,
2009).

Appeal 2013-000417
Application 11/142,032

3

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.1

ANALYSIS
Rejection under 35 U.S.C. § 103(a)
The Appellants argue that the rejection of claim 13 is improper
because the prior art fails to disclose argued elements of claim limitation [3]
identified above (App. Br. 11–12; Reply Br. 2–4).
In contrast, the Examiner has determined that the rejection of record is
proper and that the argued claim limitation is shown in the prior art by Deng
at column 2, lines 15–43, column 2, lines 56–57, column 3, lines 1–10; and
Lambert in the abstract, paragraphs 4 and 7, and Figures 1 and 4 (Ans. 7–
10).
We agree with the Examiner. Claim limitation [3] requires in part:
[3] identification data unique to the information recording
medium is obtained by a client application and transmitted to a
license management system, wherein the identification data are
pre-determined for the information recording medium.
(Claim 13, emphasis added). Here, the argued claim requires a client
application to obtain identification data unique to the information recording
medium and transmit that information to a license management system
wherein the identification data is pre-determined for the information
recording medium.

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2013-000417
Application 11/142,032

4

Deng at column 2, lines 15–30 discloses an encrypting method with
an authentication signature recorded on the media when copy protection is
required. Deng at column 2, lines 44–55 also describes the use of a unique
identification that serves as identification data that is unique. Deng at
column 2, lines 56–58 further discloses a digital product that is encrypted.
These portions of Deng disclose identification data that is unique and
predetermined for the recording medium.
Deng has not been shown to explicitly include transmitting the
obtained identification information to a license management system. The
rejection of record for transmitting identification information to a license
management system cites to Lambert at paragraphs 2, 4, and 7, as well as
Figures 1 and 4 (Ans. 7). Lambert describes a digital rights management
system that “distributes the storage of rights and/or the rights management
decision making process between a DRM client and a DRM server” (para.
2). Lambert at paragraph 7 discloses transmitting identification information
from a client to a license management system, as the claim requires, to
request rights from the license management system (see also Fig. 1). In
particular, Lambert discloses a DRM client is “required to obtain, manage
and interpret the rights, temporarily decrypt the encrypted content and
view/play it within a secure environment.” Lambert, para. 7. Lambert at
paragraph 7 also discloses that the DRM server “is responsible for issuing
rights to requesting DRM clients.” Thus, the combination of Deng and
Lambert discloses the argued limitation and the rejection of claim 13 is
sustained. The Appellants have provided the same arguments for the
remaining claims under this ground of rejection and the rejection of these
claims is sustained for the same reasons given above.
Appeal 2013-000417
Application 11/142,032

5

Rejection under 35 U.S.C. § 102(e)
We need not reach this rejection as it is cumulative of the claims
sustained with the above rejection.

CONCLUSION OF LAW
We conclude that the Appellants have not shown that the Examiner
erred in rejecting the claims 13–24 under 35 U.S.C. § 103(a).

DECISION
The Examiner’s rejection of claims 13–24 under 35 U.S.C. § 103(a) is
sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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