Ex Parte Munsell et al

Patent Trial and Appeal BoardNov 18, 2014

11828601 (P.T.A.B. Nov. 18, 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. 11/828,601 07/26/2007 Michael R. Munsell PD-207047 9603 20991 7590 11/19/2014 THE DIRECTV GROUP, INC. PATENT DOCKET ADMINISTRATION CA / LA1 / A109 2230 E. IMPERIAL HIGHWAY EL SEGUNDO, CA 90245 EXAMINER TOLENTINO, RODERICK ART UNIT PAPER NUMBER 2439 MAIL DATE DELIVERY MODE 11/19/2014 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 MICHAEL R. MUNSELL, MITCHELL B. WASDEN, JAMES A. MICHENER, RAYNOLD M. KAHN, and MARIA G. POPOLI ____________________ Appeal 2012-005190 Application 11/828,601 Technology Center 2400 ____________________ Before ALLEN R. MACDONALD, ROBERT E. NAPPI, and MICHAEL J. STRAUSS, Administrative Patent Judges. MacDONALD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-005190 Application 11/828,601 2 STATEMENT OF CASE Introduction Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-54. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Exemplary Claim Exemplary claims 1, 20, and 40 under appeal reads as follows (emphasis added): 1. A method comprising: storing a content file in a content repository; communicating a plurality of conditional access information to a video transport processing system; storing a relative time of arrival of each of the plurality of conditional access information at the video transport system; and encrypting the content file using the plurality of conditional access information and the relative time of arrival to form an encrypted content file. 20. A method comprising: storing a content file in a content repository; communicating to a video transport processing system first conditional access information corresponding at a first time and a second conditional access information at a second time after the first time; sequentially retrieving the content file from the content repository; and sequentially encrypting the content file using the first conditional access information for a first time period between the first time and the second time and the second conditional access information after the second time. Appeal 2012-005190 Application 11/828,601 3 40. A system comprising: a content repository storing a content file; and a video transport processing system receiving a plurality of conditional access information, storing a relative time of arrival of each of the plurality of conditional access information and encrypting the content file using the plurality of conditional access information and the relative time of arrival to form an encrypted content file. 1 Examiner’s Rejections The Examiner rejected claims 1–14, 20–31, 34–51, and 54 under 35 U.S.C. § 102(b) as being anticipated by Ando (US 2002/0002542 A1, published Jan. 3, 2002). 1 We recommend that the Examiner consider rejecting claim 40 and the claims that depend therefrom as indefinite under 35 U.S.C. § 112, second paragraph. Appellants’ independent system claim 40 contains the language “a video transport processing system receiving . . . and encrypting” instead of language such as ––a video transport processing system for receiving . . . and encrypting––. The effect of the current claim language is that the apparatus claims are infringed only when the device is actively performing the steps (performing the method), and not infringed when the device is not performing the steps. Typically, such claims are construed as reciting both a device and a method for using that device. Such claims do not apprise a person of ordinary skill in the art of their scope, and they are invalid under 35 U.S.C. § 112, second paragraph. See IPXL Holdings, L.L.C. v. Amazon.com, Inc, 430 F.3d 1377, 1384 (Fed. Cir. 2005). (“[S]uch a claim ‘is not sufficiently precise to provide competitors with an accurate determination of the ‘metes and bounds' of protection involved’ and is ‘ambiguous and properly rejected’ under section 112, paragraph 2. [Ex Parte Lyell, 17 USPQ2d 1548 (BPAI 1990)] at 1550-51.”). Appeal 2012-005190 Application 11/828,601 4 The Examiner rejected dependent claims 15–19, 32, 33, 52, and 53 as being unpatentable under 35 U.S.C. § 103(a) over the combination of Ando and Moreillon (US 2006/0136718 A1, published Jun. 22, 2006 ). Appellants’ Contentions 1. Appellants contend that the Examiner erred in rejecting claim 1 because: Ando does not show, teach or suggest storing a relative time of arrival of each of a plurality of conditional access information at a video transport processing system (VTPS). (App. Br. 4). 2. Further, Appellants contend that the Examiner erred in rejecting claim 1 because: Furthermore, as the relative time of arrival of claim 1 is different than the delivery time of Ando, Ando cannot disclose encrypting the content file using a relative time of arrival to form an encrypted content file, as claimed. Claim 1 is further allowable for at least this reason. (App. Br. 7). 3. Appellants contend that the Examiner erred in rejecting claim 20 because: Ando discloses a delivery time. The delivery time refers to the time when encrypted delivery information is transmitted from a content provider (or VTPS) to a user device. The delivery time does not refer to when conditional access information is delivered to a VTPS, which occurs prior to transmitting encrypted information and/or an encrypted content file to a user device. (App. Br. 10). Appeal 2012-005190 Application 11/828,601 5 4. Appellants contend that the Examiner erred in rejecting claim 40 because: As with claim 1, Ando does not disclose a VTPS that stores a relative time of arrival of each of a plurality of conditional access information and encrypts the content file using a relative time of arrival to form an encrypted content file. Thus, Ando does not disclose multiple limitations of claim 40. Appellants, therefore, respectfully request the Board to reverse the Examiner's rejection of claim 40. (App. Br. 11-12). Issue on Appeal Did the Examiner err in rejecting claims 1, 20, and 40 as being anticipated because Ando fails to disclose the argued limitations? ANALYSIS As to Appellants’ above cited contentions, we agree. CONCLUSIONS (1) Appellants have established that the Examiner erred in rejecting claims 1–14, 20–31, 34–51, and 54 as being anticipated under 35 U.S.C. § 102(b). (2) Appellants have established that the Examiner erred in rejecting claims 15–19, 32, 33, 52, and 53 as being unpatentable under 35 U.S.C. § 103(a). (3) On this record, claims 1–54 have not been shown to be unpatentable. Appeal 2012-005190 Application 11/828,601 6 DECISION The Examiner’s rejections of claims 1–54 are reversed. REVERSED lv