Ex Parte Duffield

Patent Trial and Appeal Board

Jun 16, 2015

10580806 (P.T.A.B. Jun. 16, 2015)

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.
10/580,806 05/25/2006 David Jay Duffield PU030224 8853
7590 06/16/2015
Joseph S Tripoli
Thomson Licensing Inc
Two Independence Way
Suite 200
Princeton, NJ 08540
EXAMINER
CHOKSHI, PINKAL R
ART UNIT PAPER NUMBER
2425
MAIL DATE DELIVERY MODE
06/16/2015 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 DAVID JAY DUFFIELD
____________

Appeal 2013-000692
Application 10/580,8061
Technology Center 2400
____________

Before LEE E. BARRETT, MAHSHID D. SAADAT, and HUNG H. BUI,
Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 7, 8, and 10–13. Claims 1–6 and 9 have been canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Title: “Broadcast Conditional Access System with Impulse Purchase
Capability in a Two-Way Network.” According to Appellant, the real party
in interest is Thomson Licensing S.A. App. Br. 2.
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THE INVENTION
The invention relates to an apparatus and a method for securing
impulse program purchases from conditional access network broadcast
systems. The Specification describes the problem in the prior art as follows:
Various techniques are employed to scramble program content
and the associated entitlement management messages.
However, existing broadcast systems do not rely on a two-way
communications channel from the customer equipment,
typically a set to box, to the broadcast headend for impulse
purchase authorization codes. This lack of two-way
communications provides weaknesses such that a hacker has an
opportunity to steal programs. Current impulse purchase
systems store decryption keys in the customer's set top box’s
security modules that subsequently decode services a customer
may potentially purchase. If a customer makes one of the
purchases that have been preprogrammed into the security
module, the security module typically stores a record of the
purchase and uses the decryption key it already possesses to
allow the customer to view the subject material purchased. At a
later time, the security module may be configured to create a
two-way communication channel with a billing center and
thereby may transmit the billing information back to the service
provider. If a hacker can divert the signal from the security
module and decode the decryption keys, the hacker can
potentially obtain programs and other services without paying.
Also, if a hacker can purchase a program, but clear the purchase
record before it is transmitted to the billing point, the user can
avoid paying, as well.

Spec. 2:29–3:10.
The invention transmits an impulse purchase message and receives an
authorization key that is used to decode and display the impulse purchase
program. This is said to overcome the problem in the prior art where the
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authorization codes for impulse purchases are pre-loaded into the security
module before the event is purchased.
Claim 7 is reproduced below.
7. An access device comprising:
a tuning and a communications unit for transmitting an
impulse purchase message using an out of band frequency
which is different than content providing frequencies and,
receiving an authorization key transmitted in response to the
transmission of the impulse purchase message and associated
with the impulse purchase program;
a controller and decoder unit responsive to the
authorization key that formats a digital program into a video
display; and
a billing generator within said access device which
generates a billing record data in response to the receipt of the
authorization key, wherein the access device transmits the
billing record data to the same location as the impulse purchase
message.

THE PRIOR ART
Peterka et al. (“Peterka”) US 2002/0170053 A1 Nov. 14, 2002
Graunke US 2003/0005285 A1 Jan. 2, 2003
Stewart US 2003/0140348 A1 Jul. 24, 2003
Candelore US 6,697,489 B1 Feb. 24, 2004

THE REJECTIONS
Claims 7, 8, and 10–13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Peterka, Candelore, and Graunke.
Claims 7, 8, and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Peterka, Candelore, and Stewart.

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ANALYSIS
§ 103(a) Rejection of Claims 7, 8, and 10–13 based on
Peterka, Candelore, and Graunke

The Examiner finds that the combination of Peterka and Candelor
teaches the limitations of claim 7, except for “a billing generator within said
access device which generates a billing record data in response to the receipt
of the authorization key, wherein the access device transmits the billing
record data to the same location as the impulse purchase message.” The
Examiner finds paragraph 28 of Graunke describes that billing information
collected by the set-top box is communicated back to the server and that it
would have been obvious to modify Peterka and Candelor to add this
feature. Final Act. 6–7; Ans. 6–7. The Examiner concludes that because
billing information is provided after receiving the keys, the billing
information is generated in response to receiving the keys. Ans. 23.
Appellant argues that Graunke does not teach the causation between
the receipt of an authorization key and having billing record data being
generated in response to such a receipt of a key. Reply Br. 2.
We are not persuaded by Appellant’s argument. Graunke disclose
that “billing and audit information collected by the set-top box or by the
sinks can be communicated over SAC’s or another channel back to the
server that manages the keys 63 or to another server.” Grauke ¶ 28. As the
Examiner notes, the billing information is sent after receiving the keys, as
shown in Figure 3 of Graunke, which indicates that the billing information
was generated “in response to” receipt of the authorization key, as broadly
claimed, i.e., the process could not reach the billing information step unless
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an authorization key had been received. Appellant does not address this
reason in the Reply Brief.
For these reasons, we sustain the Examiner’s rejection of independent
claim 7. Independent claims 8 and 13 recite similar limitations and we also
sustain the Examiner’s rejection of claims 8 and 13, and dependent claims
10–12.

§ 103(a) Rejection of Claims 7, 8, and 13 based on
Peterka, Candelore, and Stewart

The Examiner finds that the combination of Peterka and Candelor
teaches the limitations of claim 7, except for “a billing generator within said
access device which generates a billing record data in response to the receipt
of the authorization key, wherein the access device transmits the billing
record data to the same location as the impulse purchase message.” The
Examiner further finds Stewart discloses that a billing control system at the
service provider generates billing information after the authorization code is
received and concludes that generating the billing information within the
access device instead of in the service provider would have been obvious
because “a person of ordinary skills in the art has only a finite number of
predictable solutions within his or her technical grasp.” Final Act. 3, 15;
Ans. 15. The Examiner concludes that the generating billing record data
within the access device instead of in the service provider “is likely a
product of ordinary skill and common sense, not of innovation” and “would
have been an obvious matter of design choice . . . since applicant has not
disclosed that using receiver to generate billing information solves any
stated problem or is for any particular purpose and it appears that the
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invention would perform equally well with the billing system of Stewart.”
Final Act. 4, 15–16; see also Ans. 15–16, 24.
Appellant argues that Stewart fails to disclose or suggest a billing
generator “within said access device.” App. Br. 9. Appellant argues that the
Examiner is arguing a standard to prove patentability which appears to be a
new ground of rejection. Reply Br. 5. Appellant “do[es] not believe that the
requirements for the ‘solving any stated problem’ is a basis for properly
rejecting a claim especially when all of the claimed elements of Claim 7 are
not found in the Examiner’s combination of cited prior art.” Id.
We remain unpersuaded by Appellant’s argument. Initially, we note
Appellant waived his right to have the Examiner’s reasoning designated a
new ground of rejection by not filing a petition under 37 C.F.R. § 41.40(a)
(effective for notices of appeal filed after January 23, 2012). Nevertheless,
the Examiner’s reasoning is found in the Final Office Action.
Stewart describes that a billing code is generated by the billing control
system in the service provider in response to a user request to view the
presentation (Id. ¶¶ 8, 41; Fig. 4, step 410; claims 8 and 18). However, as
noted by the Examiner, Stewart describes that the “multimedia broadcast
system 100 can further include . . . a billing control system 114 that
generates a billing code for invoicing a subscriber when a user receives an
authorization code.” Stewart ¶ 23 (emphasis added). Thus, Stewart
describes generating a billing record data “in response to receipt of the
authorization code.” While Stewart describes that the billing code is
generated at the service provider, we agree with the Examiner that it would
have been obvious to one having ordinary skill in the art to generate the
billing code in the access device because the location is one of few possible
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locations and does not result in any different function or give any
unexpected result. See KSR International Co. v. Teleflex Inc., 550 U.S. 398,
402–403 (2007) (“When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options within
his or her technical grasp. If this leads to the anticipated success, it is likely
the product not of innovation but of ordinary skill and common sense.”).
We further conclude that the modification would have been obvious because
it was known in the prior art to generate billing information in the access
device and forward it to the server. See, e.g., Peterka ¶ 47 (“In the locally
enabled case, often called ‘IPPV’, or ‘Impulse’ PPV, the client itself makes
the purchase locally, and stores a record of the purchase. At some later time,
the record is reported to the infrastructure systems for billing.”).
For these reasons, we sustain the Examiner’s rejection of claim 7.
Independent claims 8 and 13 contain similar limitations and we also sustain
the Examiner’s rejection of claims 8 and 13.

OTHER ISSUES
In the event of further prosecution of this application, this panel
suggests that the Examiner consider rejecting claims 7, 8, and 10–13 under
35 U.S.C. § 112, first paragraph, based on lack of written description.
Independent claim 7 recites “transmitting an impulse purchase
message using an out of band frequency which is different than content
providing frequencies,” and independent claims 8 and 13 recite similar
limitations. However, Appellant’s Specification does not describe
“transmitting an impulse purchase message using an out of band frequency,”
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but only describes the authorization information 227 being transmitted using
an out-of-band frequency. Spec. 2:15–16; 7:13–14. Rather, Figure 2 shows
a means for communicating the desired impulse purchase 245, but does not
show how it is transmitted. Figure 2 shows billing record data 238 sent to a
receiver means 250 over a separate path, but billing record data is not an
impulse purchase message. Although dependent claim 10 recites “receiving
the authorization via an out of band frequency,” which is described, claim 10
does not cure the defect in parent claim 8.
Independent claim 7 recites “a billing generator within said access
device which generates a billing record data in response to the receipt of the
authorization key, wherein the access device transmits the billing record data
to the same location as the impulse purchase message,” and independent
claims 8 and 13 recite similar limitations. However, Appellant’s
Specification does not describe “generat[ing] a billing record data in
response to the receipt of the authorization key,” i.e., that there is a causal
connection between the receipt of an authorization key and having billing
record data being generated in response to such a receipt of a key. Instead,
Appellant’s Specification describes “[t]he system also may contain a means
to generate billing record data 238 and transmits such data to a means for
generating a billing record 260” (Spec. 6:4–6) and “[t]he apparatus for
communicating and receiving programming disclosed herein includes a
means to generate a billing record 260” (Spec. 7:18–19), which do not
describe the claimed causal connection.

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CONCLUSION
The rejection of claims 7, 8, and 10–13 as unpatentable over Peterka,
Candelore, and Graunke is affirmed.
The rejection of claims 7, 8, and 13 as unpatentable over Peterka,
Candelore, and Stewart 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).

AFFIRMED

rvb