Appeal No. 2003-2149 Page 8
Application No. 09/498,379
invention was made to a person having ordinary skill in the art. The examiner has not
determined that the actual differences between the subject matter sought to be patented
and the combined teachings of the applied prior art are such that the subject matter as a
whole would have been obvious at the time the invention was made to a person having
ordinary skill in the art. Thus, the examiner has not presented a prima facie case of
obviousness.
Moreover, it is clear to us that the teachings of the applied prior art would not
have made it obvious at the time the invention was made to a person of ordinary skill in
the art to have modified Obata to arrive at the claimed subject matter for the reasons set
forth by the appellant in the brief (p. 3). In that regard, the applied prior art does not
suggest supplying encrypted digital data along with a first part of the decryption key that
is associated with the digital data to a playback device. As to the examiner's
conclusions of what would have been obvious to one of ordinary skill in the art set forth
in the examiner's response to the appellant's argument (answer, pp. 3-4), we note that
the conclusion that the claimed subject matter is prima facie obvious must be supported
by evidence, as shown by some objective teaching in the prior art or by knowledge
generally available to one of ordinary skill in the art that would have led that individual to
combine the relevant teachings of the references to arrive at the claimed invention. See
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections
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