Ex Parte AMODEO et al

Patent Trial and Appeal Board

Dec 6, 2018

14689284 (P.T.A.B. Dec. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/689,284 04/17/2015
124845 7590 12/10/2018
Russell Ng PLLC (LENOVO)
8729 Shoal Creek Blvd., Suite 100
Austin, TX 78757
FIRST NAMED INVENTOR
GUILLERMO 0. AMODEO
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.
GB920030010US2 6663
EXAMINER
TABOR, AMARE F
ART UNIT PAPER NUMBER
2434
NOTIFICATION DATE DELIVERY MODE
12/10/2018 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):
s tephanie@russellnglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUILLERMO 0. AMODEO,
ELIZABETH W. CAMERON, GA VIN M. CAMERON, and
MANJIT S. SAGGU
Appeal 2018-004813
Application 14/689,284
Technology Center 2400
Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JUSTIN BUSCH, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 9--16 and 18, which constitute all the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b ). Claims 1-8 and 1 7 were cancelled.
We affirm.
1 Appellants identify the real party in interest as Lenovo Corporation. App.
Br. 3.
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Application 14/689,284
CLAIMED SUBJECT MATTER
Appellants' invention relates to a method and system for allowing a
content subscriber to access subscription content. Spec. Abstract; 1 :25-26.
The subscription content is accessed via any terminal coupled to a server
that stores the subscription content. Id. at 3:3-5.
Claim 9 is representative and reproduced below:
9. A system for providing mobile subscription content access
to a subscriber, said system comprising:
a remote server stores subscription content to be accessed
by a communication link; and
a transceiver
determines, in response to a request to access to any
of said subscription contents by a mobile receiver via a
content page on said remote server, whether or not said
requested subscription contents is on an encrypted
subscription channel;
determines, in response to a determination that said
requested subscription contents is on an encrypted
subscription channel, whether or not said mobile receiver
is permitted to receive said requested subscription
contents; and
transfers an encryption/ decryption key to said
mobile receiver and permits said mobile receiver to access
said requested subscription contents on an encrypted
subscription channel, in response to a determination that
said mobile receiver is permitted to receive said requested
subscription contents.
REJECTIONS
Claims 9-14, 16, and 18 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Khedouri (US 2006/0008256 Al; Jan. 12, 2006),
and Kuz (US 7,953,871 B2; May 31, 2011). Final Act. 2-7.
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Application 14/689,284
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Khedouri, Kuz, and Friedman (US 7,540,015 B2; May 26,
2009). Final Act. 7.
ANALYSIS
The "a transceiver determines ... whether or not said requested
subscription contents is on an encrypted subscription channel" limitation
The Examiner finds Khedouri discloses many recited elements of
claim 9 including, among other things, a transceiver that determines whether
or not requested subscription content is on an encrypted subscription
channel. Final Act. 2-3 (citing Khedouri ,r,r 53-54, 67, 69, 71, 75, 85; Fig.
7); Ans. 8 (additionally citing Khedouri ,r,r 20, 59, 79; Figs. 1, 3).
Specifically, the Examiner finds Khedouri's encryption engine 303 encrypts
contents and distributes the encrypted content to portable player devices.
Final Act. 2-3. According to the Examiner, the term "transceiver"
encompasses a generic computer that plays or downloads audio or video data
under a broadest reasonable interpretation. Ans. 8.
Appellants argue "it would not make any sense for the claimed
transceiver to be characterized as something in both a portable player device
for receiving contents and a content distribution network that distributes
contents to the portable player device." Reply Br. 2.
We begin by construing the term "transceiver." To this end, we give
claims their broadest reasonable interpretation consistent with the
Specification. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). Appellants' Specification does not define the term
"transceiver," but does note "[t]ransceiver 120 is preferably a set-top box
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Application 14/689,284
capable of handling multiple media types. Transceiver 120 may also include
a smartcard reader and a wireless interface for communicating with receiver
110." Spec. 5: 19--21. Though this description informs our construction of
the term, it does not limit our interpretation. A technical dictionary
published before the present application's filing date define the term
"transceiver" to mean "[a] device that can both transmit and receive
signals." MICROSOFT COMPUTER DICTIONARY 527 (5th ed. 2002).
With this construction, we see no error in the Examiner's finding that
Khedouri at least suggests a transceiver. Khedouri is directed to a network
that wirelessly distributes digital content to portable playback devices.
Khedouri, Abstract; ,r 41. Khedouri' s Figure 3 shows a content distribution
network and is reproduced below:
\.309
301
AUDIO CONTENT
DATABASES
SUBSCRIBER AND USAGE DATABASES 302
SECURE NETWORK GATEWAY USING SSL ,____-----<
305)'------....-------,---'
~~----~
WEBSITE FRONHND AND USER
INTERFACE SOFTWARE 308
---------- --------------------------------------------
PUBLIC OR PRIVATE INTERNET CONNECTION AND OPTIONAL WFI LOCAL
ACCESS HUB (I.E., LOCAL BASE STATION RECEIVER/TRANSCEIVER)
;------------~~--------1~---,....··_···_··_··_··_···_··_··_. ----~
310
PORTABLE PORTABLE OTHER
/ AUDIO DEVICES ... AUDIO DEVICES -·· COMPATIBLE
311 #1 .1 #2 . AUDIO DEVICES
. 312 . 313 314
DESKTOP OR
LPPTOP
COMPUTER
FIG. 3
Khedouri's content distribution network in Figure 3.
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Application 14/689,284
Khedouri' s Figure 3 illustrates network 315 includes device components
301-308 (e.g., encryption engine 303, upload manager 304, databases, etc.).
Id. ,r 79. Khedouri's secure network gateway 305 manages connections to
users over a secure sockets layer. Id. Khedouri's Figure 3 illustrates
bidirectional arrows between secure network gateway 305 and portable
player devices 311-314, which indicates Khedouri's content distribution
network 315 transmits data to, and receives data from, devices 311-314.
Khedouri, therefore, at least suggests content distribution network 315,
which includes components 301-308, is a device that can transmit and
receive signals. Therefore, Khedouri teaches or suggests the claimed
"transceiver."
Nor do we see error in the Examiner's finding that Khedouri's content
distribution network 315 determines whether requested subscription content
is on an encrypted subscription channel. Final Act. 2-3; Ans. 8.
Specifically, the Examiner finds Khedouri's encryption engine 303
optionally encrypts audio and video content before distributing the content
to portable player devices. Ans. 8. Appellants contend that, although
Khedouri' s encryption engine encrypts outgoing contents, such encryption is
not a determination of whether requested content is on an encrypted
subscription channel. App. Br. 5; see also Reply Br. 2 (arguing the claimed
transceiver "determines (not encrypts)").
Khedouri' s content distribution network 315 includes an encryption
engine 303 that optionally encrypts the digital content before delivering the
digital content outside the network 315. Khedouri ,r 79; Fig. 3. According
to Khedouri, the portable player devices may play the encrypted digital
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content only when decrypted with a private digital description key. Id. ,r 20.
Because Khedouri' s content distribution network 315 optionally encrypts the
digital content before distributing to portable player devices 311-314, it
follows that Khedouri must determine whether the content is encrypted. See
MERRIAM-WEBSTER'S COLLEGIATE DICTIONARY 315 ("determine" vb. def.
1 c ("to settle or decide by choice of alternatives or possibilities")) (10th ed.
1993). It also follows that Khedouri' s content distribution system regulates
whether the digital content ( the claimed "requested subscription contents") is
on a channel carrying the encrypted digital content ( the claimed "encrypted
subscription channel"). See id. ("determine" vb. def. 2b ("to bring about as a
result: REGULATE")). Thus, Khedouri at least suggests "a transceiver
determines ... whether or not said requested subscription contents is on an
encrypted subscription channel."
To the extent Appellants contend the transceiver's determination
occurs before sending requested subscription contents, App. Br. 5, such an
argument is unavailing because it is not commensurate with the scope of
claim 9. Specifically, claim 9 does not require sending requested
subscription contents, let alone require a transceiver's determination
occurring before any requested subscription contents are sent. See Ans. 8.
The determining "whether or not said mobile receiver is permitted to receive
said requested subscription contents" limitation
Claim 9 further recites the transceiver "determines, in response to a
determination that said requested subscription contents is on an encrypted
subscription channel, whether or not said mobile receiver is permitted to
receive said requested subscription contents" ("the permitting limitation").
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We begin by noting that the Examiner cites Khedouri alone or, alternatively,
Kuz alone for teaching the permitting limitation. Compare Final Act. 6
(finding Kuz alone teaches the permitting limitation), with Ans. 9 (finding
Khedouri alone teaches the permitting limitation). We emphasize the
Examiner's alternative reliance on these two separate cites because the
teachings of Kuz are cumulative to the teachings of Khedouri with respect to
the permitting limitation. See MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) § 1207.03(a)(II) (9th ed. Rev. 08.2017, Jan. 2018) (Item 3 dealing
with relying on fewer than all references in support of an obviousness
rejection).
Despite Appellants' arguments to the contrary, App. Br. 6, 9; Reply
Br. 3, we see no error in the Examiner's finding that Khedouri at least
suggests the permitting limitation. Khedouri's content distribution network
315 includes authentication server 306 that ensures each portable player
device is associated with a valid subscription. Khedouri ,r 79, cited in Final
Act. 3. Khedouri's authentication server 306 ensures the valid subscription
by authenticating each portable player device's unique ID or serial number.
Id. Khedouri's content distribution network 315, therefore, determines
whether each portable player device is permitted to receive the digital
content (the claimed "requested subscription contents").
The "transfer an encryption/decryption key" limitation
We also agree with the Examiner that Kuz discloses transferring an
encryption/ decryption key to a mobile receiver and permits the mobile
receiver to access requested subscription contents, as recited in claim 9.
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Final Act. 4 (citing Kuz 3:42--46; Figs. 1-2, 4); Ans. 10 (additionally citing
Kuz 3:63---65; 13:54---67).
To the extent Appellants contend that Kuz's session key cannot be
used to encrypt or decrypt content, App. Br. 8, 2 such arguments are not
commensurate with the scope of claim 9, which recites no such function.
Rather, claim 9 recites a transceiver that transfers an encryption/decryption
key to a mobile receiver and permits the mobile receiver to access requested
subscription contents. Even assuming claim 9 recites a transceiver that
transfers the encryption/decryption key to the mobile receiver that permits
the mobile receiver to access requested subscription contents, which it does
not, Kuz's "session key ... enables the mobile device to decrypt the
encrypted data service." Kuz 3:63---65. That is, if Kuz's server determines
the mobile device is allowed to access a requested encrypted data service,
the server provides a session key to the mobile device that enables the
mobile device to decrypt the requested encrypted data service. Id. 7:46-55.
Thus, we find Kuz at least suggests transferring a session key (the claimed
"encryption/decryption key") to a mobile device (the claimed "mobile
receiver") that permits the mobile device to access requested encrypted data
service (the claimed "requested subscription contents").
2 Appellants' contention concerning the alleged shortcomings of Kuz is in a
heading labeled "IV. Wilson does not disclose the claimed assigning step."
App. Br. 8 ( emphasis added). Thus, Appellants fail to provide a proper
heading as required by 37 C.F.R. § 41.37 (c)(l)(iv) (requiring "each heading
shall reasonably identify the ground of rejection being contested (e.g., by ...
applied reference, if any)."). The Examiner responds by addressing Kuz.
See Ans. 10. We, therefore, treat Appellants' apparent typographical error
as harmless.
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Appellants' Non-analogous Art Argument
Appellants' contend Khedouri and Kuz are non-analogous art. App.
Br. 8. According to Appellants, "[t]here is no structural and functional
similarities shared by Khedouri and Kuz." Id. We disagree.
First, the analogous art test does not ask whether the prior art
references are analogous to each other, but whether the references are
analogous to the claimed subject matter. See In re Kahn, 441 F.3d 977,
986-87 (Fed. Cir. 2006) (defining the scope of analogous prior art as falling
under at least one of two separate tests: (1) whether the reference's art is
from the same field of endeavor as the invention, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved). Second, and contrary to
Appellants' assertion that the Patent Office classification of an application
serves as a basis to distinguish structural and functional similarities between
the art of record, App. Br. 8, our reviewing court recognizes "[ w ]hile we
find the diverse Patent Office classification of the references to be some
evidence of 'non-analogy,' ... we consider the similarities and differences
in structure and function of the inventions disclosed in the references to
carry far greater weight." In re Ellis, 476 F.2d 1370, 1372 (CCP A 1973);
see also MPEP § 2141.0l(a) (citing Ellis).
Third, Appellants' claimed subject matter is directed to "providing
mobile subscription content access." Spec. 1:24. Khedouri is directed to
audio and video player devices that receive content from a subscription-
based content delivery service. Khedouri ,r 3. Kuz is directed to providing
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secure access to data services for mobile devices. Kuz 1: 15-16. Based on
these similarities, we find Khedouri and Kuz are both within the same field
of endeavor as the claimed subject matter.
Summary
Appellants' arguments do not persuade us of error in the rejection of
claim 9. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). Accordingly, we sustain the rejections of (1) independent
claim 9; (2) independent claim 16, which was argued relying on the
arguments made for claim 9, see App. Br. 9; and (3) claims 10-15 and 18,
which depend directly, or indirectly, from claims 9 and 16, and were not
separately argued with particularity, see id. at 5-10.
CONCLUSION
Under§ 103(a), the Examiner did not err in rejecting claims 9-16 and
18.
DECISION3
We affirm the Examiner's decision to rejection claims 9-16 and 18.
3 In the event of further prosecution, the Examiner may wish to consider
whether independent claims 9 and 16 meet the requirement of 35 U.S.C.
§ 112, ,r 2. In particular, the Examiner may wish to consider whether claims
9 and 16, which appear to recite method steps ( e.g., claim 9 recites "a remote
server stores subscription content" and "a transceiver determines ...
determines ... and transfers"), are hybrid claims because the claims each
encompass two statutory categories of invention, namely an apparatus and a
method of using the apparatus. See MPEP § 2173 .05(p )(II) ("A single claim
which claims both an apparatus and the method steps of using the apparatus
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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). See 37
C.F.R. § 41.50(±).
AFFIRMED
is indefinite under 35 U.S.C. § 112, [,I 2]."); see also IPXL Holdings, L.L.C.
v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (a claim to "both
a system and the method for using that system ... does not apprise a person
of ordinary skill in the art of its scope, and it is invalid" under 35 U.S.C. §
112, ,r 2); In re Katz Interactive Call Processing Patent Litig., 639 F.3d
1303, 1318 (Fed. Cir. 2011) (claims "directed both to systems and to actions
performed" by users of such systems "fall squarely within the rationale of
IPXL and are indefinite.") Although the Board is authorized to reject claims
under 37 C.F.R. § 4I.50(b), no inference should be drawn when the Board
elects not to do so. See MPEP § 1213.02.
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