Ex Parte William Gibbens

Patent Trial and Appeal Board

Jan 31, 2017

12450533 (P.T.A.B. Jan. 31, 2017)

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.
12/450,533 09/29/2009 Redmann William Gibbens PU070108 7095
24498 7590 02/02/2017
Robert D. Shedd, Patent Operations
THOMSON Licensing LLC
4 Research Way
3rd Floor
Princeton, NJ 08543
EXAMINER
SU, SARAH
ART UNIT PAPER NUMBER
2431
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
uspto@technicolor.com
pat. verlangieri @ technicolor.com
russell. smith @ technicolor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte REDMANN WILLIAM GIBBENS
Appeal 2016-002066
Application 12/450,533
Technology Center 2400
Before ALLEN R. MacDONALD, CARLA M. KRIVAK, and
JOHN F. HORVATH, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-002066
Application 12/450,533
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 14—32. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 25 and 32 under appeal read as follows (emphasis,
formatting, and bracketing added):
25. A method for generating a key usable by a secure media block to
decrypt encrypted media, said secure media block having a secure
clock, the method comprising:
(a) accepting an order at a key generator, the order being
associated with the secure media block and the order having a first
validity interval;
(b) obtaining at the key generator an offset of the secure clock
relative to a reference clock; and
(c) producing the key by the key generator, in response to
accepting the key order, the key having a second validity interval
based on the first validity interval adjusted according to the offset.
32. A method performed by a digital cinema system in connection
with digital cinema presentation, comprising the step of:
[(a)] adjusting at a secure clock monitor of the digital cinema
system a validity interval of a key for decrypting content in
accordance with a time difference between a current time value of a
secure clock within a screen server of a digital cinema system and a
current time value from a reference clock, provided that the time
difference does not exceed a prescribed value,
[(b)] but if so generating warning which an operator can
override.
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Appeal 2016-002066
Application 12/450,533
Rejections on Appeal
1. The Examiner rejected claims 25—27 and 29 under
35 U.S.C. § 102(a) as being anticipated by Kaneko et al. (EP 1758291 Al;
pub. February 28, 2007).1
2. The Examiner rejected claim 32 under 35 U.S.C. § 102(b) as
being anticipated by Morgan (US 2003/0204738 Al, pub. Oct. 30, 2003).
3. The Examiner rejected claims 14—24, 28, 30, and 31 under
35 U.S.C. § 103(a) as being unpatentable over Kaneko in various
combinations with other references.2
Appellant’s Contentions3
1. Appellant contends the Examiner erred in rejecting claim 25
under 35 U.S.C. § 102(a) because “Applicant respectfully submits that
Kaneko et al. does not teach the [step (b)] of Applicant’s claim 25.” App.
Br. 10.
In support of her assertion that Kaneko et al. teaches this feature
of Applicant’s claim 25, the Examiner relies on paragraph
[0057], lines 1-7 and paragraph [0062], lines 4-9 of Kaneko et
al. . . . Neither of these paragraphs, nor any other portion of
Kaneko et al teaches or suggests obtaining the offset value at the
key generator. At best, to the extent that an offset value exists,
1 Separate patentability is not argued for claims 26, 27, and 29. Except for
our ultimate decision, the Examiner’s rejection of claims 26, 27, and 29 is
not discussed further herein.
2 Separate patentability is not argued for claims 14—24, 28, 30, and 31. As to
these claims, Appellant references the arguments of claim 25. App. Br. 15—
16. Thus, the rejections of these claims turn on our decision as to claim 25.
Except for our ultimate decision, these claims are not discussed further
herein.
3 These contentions are determinative as to the rejections on appeal.
Therefore, Appellant’s other contentions are not discussed herein.
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Application 12/450,533
the communication apparatus (101) and (102) of Kaneko et al.
obtain the offset value from each other, as discussed in paragraph
[0057] of Kaneko et al., not from the key distributing server
apparatus (104), corresponding [to] Applicant’s key generator in
accordance with Applicant’s claims.
App. Br. 10-11, emphases omitted.
2. Appellant contends the Examiner erred in rejecting claim 25
under 35 U.S.C. § 102(a) because “Kaneko et al. does not teach Applicant’s
claim [step (c)].” App. Br. 11.
At best, Paragraph [0057] of Kaneko et al. [cited by the
Examiner] describes the desirability of having the
communications apparatus (101) and (102) exchange keep-alive
messages regarding the time difference between them. However,
this paragraph of Kaneko et al, like the remainder of this
reference, says nothing about producing a key that has a second
validity interval based on the first (original) validity interval
adjusted according to the offset. Indeed, paragraph [0057] of
Kaneko et al. says nothing about producing a key at all.
Applicants submit that paragraph [0062] of Kaneko et al.
describes the process of acquiring a new key from the key
distributing server apparatus (104) upon a determination that a
prior key has expired. However, paragraph [0062] of Kaneko et
al. says nothing regarding the validity interval of this new key,
let alone, basing the validity interval of this key on the first
(original) validity interval adjusted according to the offset. At
best, Kaneko et al. suggests synchronizing the validity interval
of the keys associated with the communications apparatus (101)
and (102).
App. Br. 11, emphases omitted.
3. Appellant contends the Examiner erred in rejecting claim 32
under 35 U.S.C. § 102(b) because:
Applicant’s claim 32 recites the feature of generating a
warning if the time difference between a current time value of a
secure clock exceeds a prescribed value. Nowhere does Morgan
disclose or suggest generating a warning as recited in Applicant’s
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Application 12/450,533
claim 32. Moreover, Morgan also fails to disclose Applicant's
feature of an operator overriding that warning. Since Morgan
does not generate a warning, there is no warning which an
operator can override.
The [Ejxaminer’s contention that Morgan’s disclosure of
an operator obtaining a new key constitutes the equivalent of
overriding a warning lacks merit. First, paragraph [0083]
provides that the distributor chooses whether to provide a new
key, not an operator. Thus, if the distributor chooses not to
provide a key, the operator cannot ‘override’ non-enablement of
the output when the skew time exceeds the window of
opportunity by obtaining a new key.
App. Br. 8—9, emphases omitted.
Issues on Appeal
Did the Examiner err in rejecting claim 25 as being anticipated under
35 U.S.C. § 102(a) because Kaneko fails to describe the limitations argued
by Appellant?
Did the Examiner err in rejecting claim 32 as being anticipated under
35 U.S.C. § 102(b) because Morgan fails to describe the limitations argued
by Appellant?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments (Appeal Brief and Reply Brief) that the Examiner has erred.
As to Appellant’s above contentions 1 and 2 directed to claim 25, we
agree. As argued by Appellant, Kaneko does not describe steps (b) and (c)
as required by claim 25.
As to Appellant’s above contention 3, we disagree. Appellant’s
arguments are not commensurate with the scope of the claim language. “In
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Application 12/450,533
the patentability context, claims are to be given their broadest reasonable
interpretations . . . limitations are not to be read into the claims from the
specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(citations omitted). A proper interpretation of claim language, under the
broadest reasonable interpretation of a claim during prosecution, must
construe the claim language in a way that at least encompasses the broadest
interpretation of the claim language for purposes of infringement. “[I]t is
axiomatic that that which would literally infringe if later anticipates if
earlier.” Bristol-Myers Squibb Co. v. Ben Venue Labs, Inc., 246 F.3d 1368,
1378 (Fed. Cir. 2001).
We note claim 32 specifically recites conditional limitations
“adjusting . . ., provided that the time difference does not exceed a
prescribed value, but if so generating warning which an operator can
override.” (Emphasis added). As a matter of claim construction under the
broadest reasonable interpretation, we conclude if a “time difference does
not exceed a prescribed value,” then the claimed “generating warning” is not
required to be performed. Claim 32. See Ex parte Schulhauser, Appeal No.
2013-007847, 2016 WL 6277792 (PTAB, April 28, 2016) (precedential)
(The Examiner did not need to present evidence of the remaining method
steps of claim 1 that are not required to be performed under a broadest
reasonable interpretation of the claim); see also Ex parte Katz, 2011 WL
514314, at *A-5 (BPAI Jan. 27, 2011).
Appellant argues Morgan does not disclose “the feature of generating
a warning if the time difference between a current time value of a secure
clock exceeds a prescribed value.” App. Br. 14. However, Appellant
“acknowledge[s] that Morgan determines the time difference (referred to as
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Application 12/450,533
the ‘skew time’) between the clock of the content transmitter and the clock
of the content receiver.” App. Br. 14. Further, Appellant does not dispute
the Examiner’s finding that Morgan discloses “adjusting at a secure clock
monitor of the digital cinema system a validity interval of a key for
decrypting content in accordance with a time difference between a current
time value of a secure clock within a screen server of a digital cinema
system and a current time value from a reference clock, provided that the
time difference does not exceed a prescribed value.” Final Act. 5.
Based on the manner in which claim 32 is written, the method of
Morgan would literally infringe claim 32 by virtue of its performance of
only the “adjusting” step. See, e.g., Appier a Corp. v. Illumina, Inc., 375
Fed. Appx. 12, 21 (Fed. Cir. 2010) (unpublished) (affirming a district court’s
interpretation of a method claim as including a step that need not be
practiced if the condition for practicing the step is not met); Cybersettle, Inc.
v. Nat’l Arbitration Forum, Inc., 243 Fed. Appx. 603, 607 (Fed. Cir. 2007)
(unpublished) (“It is of course true that method steps may be contingent. If
the condition for performing a contingent step is not satisfied, the
performance recited by the step need not be carried out in order for the
claimed method to be performed.”).
For the reasons provided supra, we find Appellant’s argument that
Morgan fails to teach the conditional step of claim 32 unavailing, because
the argument is not commensurate with the broadest reasonable
interpretation of claim 32. See Schulhauser, Appeal No. 2013-007847, at
*4. We agree with the Examiner’s finding that Morgan anticipates claim 32
by disclosing the “adjusting” step of claim 32. Therefore, we agree with the
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Application 12/450,533
Examiner’s determination that claim 32 is anticipated under 35 U.S.C.
§ 102(b).
CONCLUSIONS
(1) Appellant has established that the Examiner erred in rejecting
claims 25—27 and 29 as being anticipated under 35 U.S.C. § 102(a).
(2) Appellant has established that the Examiner erred in rejecting
claims 14—24, 28, 30, and 31 as being unpatentable under 35 U.S.C. § 103(a)
for the same reasons as claim 25.
(3) The Examiner has not erred in rejecting claim 32 as being
anticipated under 35 U.S.C. § 102(b).
(4) Claims 14—31 have not been shown to be unpatentable.
(5) Claim 32 is not patentable.
DECISION
The Examiner’s rejection of claims 25—27 and 29 as being anticipated
under 35 U.S.C. § 102(a) is reversed.
The Examiner’s rejections of claims 14—24, 28,30, and 31 as being
unpatentable under 35 U.S.C. § 103(a) are reversed.
The Examiner’s rejection of claim 32 as being anticipated under 35
U.S.C. § 102(b) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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