"Encrypted version" allows transformations other than encryption (Ex parte Hughes)

Takeaway: The BPAI held that "an encrypted version of the digital content" does not mean that encryption is the only difference between the content and the encrypted content. Thus, an encrypted G-rated version of a particular movie is an encrypted version of the R-rated version of the same movie.

Ex parte Hughes
Appeal 2008-003550; Appl. No. 10/853,464; Tech. Center 3600
Decided: September 28, 2009

This application was directed to distribution of digital content. Here is a representative claim:

38. A method for making a storage medium for the distribution of digital content, comprising:
storing, on a storage medium, digital content data adapted to be unreadable on a computer
system;
storing, on the storage medium, an encrypted version of the digital content data that is
readable on the computer system.

The reference described assembling a movie by selecting either the G-rated portions, R-rated portions, or X-rated portions of the movie, and then encrypting the selected portions. The Appellant argued that the encrypted R-rated movie was not an encrypted version of the G-rated movie. "Since one movie version contains parts (R-rated) that the other movie version does not, the two movie versions are different — not identical — and cannot be considered the same movie when perceived by a viewer (even though the titles may be the same)."

The Board chastisted the Appellant for arguing outside the claims.

     However, the claim does not require that the only difference between the readable version and the unreadable digital content data is that it is encrypted. The Specification does not contain an express definition of “version” (FF 2) and we find that version is defined as “a form or variant of a type or original” (FF 3). We find nothing in claim 1 that requires the only variation of encrypted version of the digital content data to be the encryption.
     We find that Schneck’s example of R-rated version and G-rated version of portions of a movie read on the claimed digital content data and encrypted version of the digital content data, respectively. Both are described as versions of the same portion of a movie (i.e. digital content data).
(Decision, pp. 8-9, emphasis added.)

My two cents: I give the Board points for a clever rationale. My first reaction to this reasoning was: but if you transform the movie by selecting only G-rated portions, it's no longer "an encrypted version of the digital content," it's now "a transformed encrypted version of the digital content", and thus the claim is distinguishable from the reference.
 
But I changed my mind. I think the Board is right, at least for this particular claim language.

To use an analogy involving successive transformations, my original thinking was that a blue+red car is no longer a blue car, but has been transformed into purple car. But if the rating transformation is independent of the encryption transformation, maybe the better analogy is fast+red, not blue+red. A fast+red car is still a red car, so the Board's view makes sense. I think the right outcome depends on whether or not the transformations are independent.