Ex Parte Le Pelerin et al

Patent Trials and Appeals BoardJan 7, 2019

14128166 - (D) (P.T.A.B. Jan. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/128,166 05/22/2014 157616 7590 01/09/2019 OBLON/KUDELSKI 1940 DUKE STREET ALEXANDRIA, VA 22314 FIRST NAMED INVENTOR Alain Le Pelerin 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 516618US 9103 EXAMINER ALCON, FERNANDO ART UNIT PAPER NUMBER 2425 NOTIFICATION DATE DELIVERY MODE 01/09/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patentdocket@oblon.com OBLONPAT@OBLON.COM iahmadi@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALAIN LE PELERIN and MATTHIEU PIQUET 1 Appeal2017-003007 Application 14/128,166 Technology Center 2400 Before KAL YANK. DESHPANDE, JASON V. MORGAN, and HUNG H. BUI, Administrative Patent Judges. DESHPANDE, Administrative Patent Judge. DECISION ON APPEAL 2 Appellants seeks review under 35 U.S.C. Â§ 134(a) of the Examiner's Final Rejection of claims 1-3, 5-12, and 14--19. Claims 4 and 13 have been canceled. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b ). An oral hearing was held on November 8, 2017. A transcript of the oral hearing will be made of record in due course. We AFFIRM. 1 The real party in interest is the Assignee, Nagravision S.A. App. Br. 2. 2 Our Decision makes reference to Appellants' Reply Brief filed Dec. 15, 2016 ("Reply Br."), and Appeal Brief filed Apr. 8, 2016 ("App. Br."), and the Examiner's Answer mailed Oct. 26, 2016 ("Ans."), and Final Office Action mailed Oct. 8, 2015 ("Final Act."). Appeal2017-003007 Application 14/128,166 INVENTION Appellants' invention is directed to digital media players that store digital media content. Spec. 1 :3-5. Specifically, Appellants' invention is directed to receiving digital media content and providing conditional access to the content through the use of a conditional access module (CAM). Id. at 1:3-11. Independent claim 1 is illustrative of the claims and is reproduced below: 1. A method for processing a broadcast transport stream including content of a first type, content of a second type, and a piece of metadata comprising encrypted switching information associated with at least one alternative content using a media player comprising a storage device for storing the alternative content, a conditional access module, and a presentation module to present a portion of the processed transport stream, the method comprising: decrypting the encrypted switching information using the conditional access module of the media player; and substituting content of the second type by at least part of the associated alternative content based on the decrypted switching information, thereby creating the portion of the processed transport stream; comparing a viewer profile and a content description associated with the alternative content; and based on the comparison of the viewer profile and the content description, storing the substituted content of the second type in the storage device. 2 Appeal2017-003007 Application 14/128,166 REFERENCES Candelore US 2005/0028193 Al Feb.3,2005 Kizuka US 2003/0188308 Al Oct. 2, 2003 Jagadeesan US 2006/0075449 Al Apr. 5, 2006 Tsusaka US 2003/0212810 Al Nov. 13, 2003 Shteyn US 2002/0162109 Al Oct. 31, 2002 Plotnick US 2002/0144262 Al Oct. 3, 2002 REJECTIONS Claims 1-3, 5---6, 8, 10-12, 14--15, and 17 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Candelore, Plotnick, and Kizuka. Claims 9 and 18 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Candelore, Plotnick, Kizuka, and Jagadeesan. Claims 7 and 16 stand rejected under 35 U.S.C. Â§ I03(a) as obvious over Candelore, Plotnick, Kizuka, and Tsusaka. Claim 19 stands rejected under 35 U.S.C. Â§ I03(a) as obvious over Candelore, Plotnick, Kizuka, and Shteyn. ISSUE The issue whether the Examiner erred in rejecting claims 1-12 and 14--19 under 35 U.S.C. Â§ I03(a) as obvious over the cited prior art3 turns on whether the Candelore discloses "decrypting the encrypted switch information using the conditional access module of the media player." 3 Appellants allege Candelore fails to disclose a limitation found in all of the claims. Accordingly, Appellants' arguments are presented towards all of the grounds of rejection set forth by the Examiner. 3 Appeal2017-003007 Application 14/128,166 ANALYSIS Appellants contend that Candelore fails to disclose "a method for processing a broadcast content stream including ... a piece of metadata comprising encrypted switching information" and "decrypting the encrypting switching information using the conditional access module of the media player." Specifically, Appellants argue that Candelore's "PIDs," "main content," or "criteria within the encrypted broadcast which informs the switching to alternative content"4 are not "encrypted switching information." App. Br. 3-7, 8-9; Reply Br. 2-5. We disagree with Appellants. Claim 1 recites "a method for processing a broadcast content stream including ... a piece of metadata comprising encrypted switch information." Appellants do not contend that an express or special definition for "metadata" is required. Under the broadest reasonable interpretation, in light of the specification, the definition of "metadata" includes "data that describes and gives information about 4 Appellants contend that the Examiner improperly asserted the "main content" as disclosing the "encrypted switching information" for the first time in an Advisory Action after the Final Rejection. App. Br. 9-10. Appellants also contend that the Examiner improperly asserted that the "criteria within the encrypted broadcast that informs the switching to alternative content" as disclosing "encrypted switching information" for the first time in Examiner's Answer. Reply Br. 3 ( citing Ans. 3--4 ). These matters, however, are a petitionable and not an appealable. See In re Schneider, 481 F.2d 1350, 1356--57, (CCPA 1973), and In re Mindick, 371 F.2d 892, 894, (CCPA 1967). See also the MPEP Â§ 1002.02(c), item 3(a) and Â§ 1201 (9th ed. 2018). Thus, the relief sought by the Appellants would have been properly presented by a petition to the Commissioner under 3 7 C.F.R. Â§ 1.181 instead ofby appeal to this Board. Accordingly, we will not further consider Appellants' allegation that the Examiner has improperly relied on new evidence not presented in the Final Rejection. 4 Appeal2017-003007 Application 14/128,166 other data."5 See Spec. 20:22-32. Within the context of claim 1, "metadata" includes "switch information" that indicates to substitute content to alternative content. See, e.g., id. Claim 1 further requires the step of "decrypting the encrypted switching information using the conditional access module of the media player." As discussed above, the Examiner relies on Candelore to disclose this limitation. Candelore discloses a method for content substitution to provide an enhanced level of customization of television programming. Candelore ,r 26. In Candelore, content is received with portions identified by packet identifiers (PIDs). Id. ,r 2 7. The content is examined to determine whether a prescribed substitution criterion has been met, and, if the substitution criterion is met, a content substitution is carried out. Id. ,r,r 27-28. Appropriate instructions are sent from the cable system head end whenever substitute content is to be used. Id. ,r 38. That is, Candelore's "substitution criterion" that results in instructions being sent from the cable system head discloses the claimed "switch information." Accordingly, we are not persuaded by Appellants' argument that Can de lore fails to disclose "switch information." Appellants further argue that Candelore fails to disclose that the "switching information" is encrypted. App. Br. 7-8. Appellants argue that "[i]t is well known that not all information from the head end is encrypted," and nothing in Candelore discloses the "switching information" is encrypted. Id. Appellants further argue that the claims require that the decrypting is performed using the "conditional access module." Id. at 8. 5 Oxford English Dictionary, available at http://www.oed.com (last accessed December 28, 2018). 5 Appeal2017-003007 Application 14/128,166 We are not persuaded by Appellants' argument. Candelore discloses that video content is received by tuner 607 in set-top box 600. Candelore ,r 144, Fig. 14. Demodulator 610 demodulates the video content, and the demodulated video content is provided to PID decoder/demultiplexer/ descrambler circuit 614. Id. PID decoder/demultiplexer/descrambler circuit 614 "decrypts encrypted information in accordance with a decryption algorithm to prevent unauthorized access to programming content." Id. A person with ordinary skill in the art would glean from this disclosure that the video content received by tuner 608 includes the substitution criterion, and, therefore, the substitution criterion is decrypted by set-top box 600. Candelore further discloses that set-top box 600 may further incorporate a smart-card reader to communicate with a smart-card that serves as a conditional access module (CAM). Id. ,r 147. Candelore discloses that the use of CAMs are conventional and are used for authenticating users and transactions. Id. Accordingly, a person with ordinary skill in the art would understand that PID decoder/demultiplexer/descrambler circuit 614 of set- top box 600 may incorporate a CAM, such as a smart-card, in order to authenticate users and transactions for decrypting content. As such, we find that Candelore discloses "a method for processing a broadcast content stream including ... a piece of metadata comprising encrypted switch information." Appellants further argue that Candelore cannot disclose the limitations of claims 8 and 9, because claim 8 requires that the "metadata is an electronic . . . message comprising ... switching information." Reply Br. 5. We are not persuaded by Appellants. First, Appellants present this argument for the first time in the Reply Brief, and Appellants have not shown any 6 Appeal2017-003007 Application 14/128,166 cause as to why this issue was first raised in the Reply Brief. Thus, this argument is untimely. See 37 C.F .R. Â§ 41.41 (b )(2) (2015); Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI2010) (Informative) ("thereplybrief[isnot] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not."). To the extent Appellants are attempting to demonstrate cause by the Examiner had not previously cited paragraph 27, and "as a matter of fairness," Appellants' new arguments towards claims 8 and 9 should be considered, we disagree with Appellants that this is sufficient cause. Candelore was relied on as prior art in the Final Office Action, and Candelore' s disclosure of decrypting video content that includes substitution criterion, and evaluating the substitution criterion to determine whether to instruct the substitution of content was known to Appellants. Final Act. 4-- 1 O; Candelore ,r,r 27, 3 8, 144. Even assuming, arguendo, that "as a matter of fairness" we consider Appellants' argument, we are not persuaded by Appellants' argument. Appellants generally allege that "all of these 'criteria' [cited by the Examiner] are in the content and therefore cannot be in an electronic message." Reply Br. 5. Appellants do not provide any further evidence or argument to distinguish the claims from the prior art. Accordingly, Appellants' argument is tantamount to a mere allegation of patentability. See 37 C.F.R. Â§ 4I.37(c)(l)(iv) (2015) ("A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim."); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation 7 Appeal2017-003007 Application 14/128,166 of the claim elements and a naked assertion that the corresponding elements were not found in the prior art."). Furthermore, the Specification discloses that control messages and electronic control message are typically within the video content that is received by the user unit and decrypted by the CAM. Spec. 4: 17-21, 5 :24-- 6:7. As discussed above, we find that Candelore discloses using a CAM to decrypt video content, which includes electronic messages, such as substitution criterion, to determine whether to instruct the substitution of content. Candelore ,r,r 27, 3 8, 144. Accordingly, we are not persuaded by Appellants' argument that Candelore fails to disclose the limitations of claim 8, and as incorporated by claim 9. CONCLUSION The Examiner did not err in rejecting claim 1-3, 5-6, 8, 10-12, 14-- 15, and 17 under 35 U.S.C. Â§ 103(a) as obvious over Candelore, Plotnick, and Kizuka. The Examiner did not err in rejecting claims 9 and 18 under 35 U.S.C. Â§ 103(a) as obvious over Candelore, Plotnick, Kizuka, and Jagadeesan. The Examiner did not err in rejecting claim 7 and 16 under 35 U.S.C. Â§ 103(a) as obvious over Candelore, Plotnick, Kizuka, and Tsusaka. The Examiner did not err in rejecting claim 19 under 35 U.S.C. Â§ 103(a) as obvious over Candelore, Plotnick, Kizuka, and Shteyn. DECISION We affirm the rejection of claims 1-3, 5-12, and 14--19. 8 Appeal2017-003007 Application 14/128,166 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 9