Ex Parte Kahn et al

Patent Trial and Appeal Board

Jun 29, 2016

13721655 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131721,655 12/20/2012
20991 7590 06/30/2016
THE DIRECTV GROUP, INC.
PA TENT DOCKET ADMINISTRATION
CA I LAI I Al09
2230 E. IMPERIAL HIGHWAY
EL SEGUNDO, CA 90245
FIRST NAMED INVENTOR
Raynold M. Kahn
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.
PD-205076C 4268
EXAMINER
REZA, MOHAMMAD W
ART UNIT PAPER NUMBER
2436
MAILDATE DELIVERY MODE
06/30/2016 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 RA YNOLD M. KAHN, ROMULO PONTUAL, and
ROBERT G. ARSENAULT
Appeal2015-003313
Application 13/721,655
Technology Center 2400
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1--42. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm-in-part.
1 According to Appellants, the real party in interest is The DIRECTV Group,
Inc. App. Br. 2.
Appeal2015-003313
Application 13/721,655
STATEMENT OF THE CASE
The Claims
Appellants' claims 1 and 25 are independent. Claim 1, copied below,
is illustrative of the subject matter on appeal:
1. A method of delivering a media content file to a first user
device separate from a group of user devices comprising:
receiving a media content file at each of the group of user
devices directly from a satellite;
receiving a portion of the media content file at the first user
device from the satellite;
communicating a media content file request for a missing
portion of the media content file from the first user device to the
group through a terrestrial network; and
receiving the missing portion of the media content file at
the first user device from at least one of the group of user devices
through a peer-to-peer network.
App. Br. 14.
The Examiners Rejections
Claims 1-7 and 25-31 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Walter et al. (US 2008/0022297 Al; published Jan. 24,
2008), Walters et al. (US 2012/0174167 Al; published July 5, 2012), and
Powell et al. (US 2003/0204851 Al; published Oct. 30, 2003). See Final
Act. 3-5, 9.
Claims 8-24 and 32--42 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Walter, Walters, Powell, and Wasilewski (US
2006/0039560 Al; published Feb. 23, 2006). See Final Act. 5-9.
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Application 13/721,655
Claims 1-7, 25-31
ANALYSIS
Appellants argue the Examiner erred in finding that Walters teaches or
suggests claim 1 's "communicating a media content file request for a
missing portion ... through a terrestrial networ~' and "receiving the
missing portion ... through a peer-to peer networ~' because Walters' s
request for catch-up content is communicated through the same network
(i.e., the data network or the peer-to-peer network) as the network through
which the catch-up content is sent. See Reply Br. 5---6; App. Br. 6-7.
We are unpersuaded of error. The Examiner found Walters teaches
that a DVR may request catch-up content, i.e., "missing portion," from one
or more peer DVRs in a peer-to-peer network of DVRs. See Ans. 14 (citing
Walters i-fi-130, 98, 100). As cited by the Examiner, Walters teaches that a
peer DVR in the peer-to-peer network of DVRs can receive the catch-up
request through a data network interface and, in response, deliver the catch-
up content to the requesting DVR. See id. (citing Walters i-fi-130, 99-100).
In Walters, while it is true that the DVR's request for catch-up content is
made through a peer-to-peer network, it is also true that this request is sent
and received via a data network interface (see Walters i-fi-198-99), which
enables the DVR to send and receive information utilizing various protocols
over a network, such as the Internet (see Walters i169). Accordingly, by
using a data network interface in a catch-up content request, Walters implies
that its DVR communicates its request for catch-up content through
Walters's data network, e.g., the Internet. See Walters i-fi-167, 69, 99.
Therefore, in view of Appellants' Specification, which defines a "terrestrial
network" as including "an Internet based network" (see Spec. i133) and a
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Application 13/721,655
"peer-to-peer network" as being "formed from the group of user devices and
the first user device" using the Internet (Spec. i-fi-f l 0, 100), we find Walters' s
teaching that a DVR communicates a request for catch-up content to one or
more peer DVRs in a peer-to-peer network, and in response, one of the peer
DVRs delivers the catch-up content to the requesting DVR, falls within the
broadest reasonable interpretation of "communicating a request for a missing
portion ... through a terrestrial network," and "receiving the missing
portion ... through a peer-to peer network," as recited in claim 1.
For similar reasons, we are unpersuaded by Appellants' argument that
Walters does not teach or suggest "communicating a ... request for a
missing portion ... via a second network; and receiving the missing portion
... via a third network," where "[t]he ... second and third networks are
different networks." Reply Br. 2-3; see also Reply Br. 4--5, 7. Further, we
are unpersuaded by Appellants' argument that Walters does not teach or
suggest "receiving a portion of a media content file ... from a first network"
different from the second and third networks (see Reply Br. 2-3; see also
Reply Br. 4--5, 7) because Walters teaches receiving a portion of a media
content file through a satellite network, which is different from Walters' s
data and peer-to-peer networks. See Ans. 13-14 (citing Walters i-fi-141, 71).
Having considered the Examiner's Final Rejection and Answer in
light of Appellants' arguments and the evidence of record, we are
unpersuaded of error and adopt as our own the Examiner's findings,
conclusions, and reasoning consistent with our analysis above. See Final
Act. 3--4; Ans. 11-15. We sustain the Examiner's rejection of independent
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Application 13/721,655
claim 1, as well as independent claim 25, 2 and dependent claims 2-7 and
25-31, which were not argued with particularity beyond those arguments
advanced for claim 1. See App. Br. 7-8; Reply Br. 7-8.
Claims 8-17, 32-37
Claim 8 recites "wherein the missing portion of the media content file
is encrypted in response to first encryption-decryption information to form
an encrypted missing portion of the media content file." App. Br. 15.
Appellants argue that none of the cited portions of Wasilewski teach or
suggest a missing portion, encryption, and/or encrypting a missing portion.
See App. Br. 9.
We are unpersuaded of error. Contrary to Appellants' argument and
as cited by the Examiner, Wasilewski evidences the known technique of
"encryption" by teaching the encryption of content including program
instances and television signals. See Final Act. 5 (citing Walters i-f 15, 17).
Moreover, as cited by the Examiner, Walters teaches encrypting content
including satellite transmissions, delivered content, and content shared
between the DVRs. See Ans. 16 (citing Walters i-fi-176, 91, 100).
2Independent claim 25 claims a "communication system" and recites "a first
user device receiving a portion of the media content file" and "at least one of
the group of user devices communicating the missing portion of the media
content file," among other limitations. App. Br. 25 (Claims App'x). In the
event of further prosecution, we invite the Examiner to consider whether
independent claim 25 and its dependent claims are indefinite under 3 5
U.S.C. § 112(b) as claiming both an apparatus and steps of using the
apparatus. See MPEP 2173.05(p)II; IPXL Holdings v. Amazon, Inc., 430
F.3d 1377, 1384 (Fed. Cir. 2005); but see UltimatePointer, LLC v. Nintendo,
Ltd., 816, F.3d 816, 826-27 (Fed. Cir. 2016) (distinguishing IPXL).
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Accordingly, consistent with the Examiner's conclusion of obviousness, we
conclude that applying the known technique of encrypting to Walters's
catch-up content would have been obvious to one having ordinary skill in
the art, providing the predictable result of encrypted catch-up content,
thereby ensuring content security. See KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007); see also Wasilewski i-f 3 ("To ensure content security,
the digital content streams are encrypted .... "). Further, Appellants present
no evidence to suggest that encrypting a missing portion of a media content
file would have been "uniquely challenging or difficult for one of ordinary
skill in the art" or otherwise "represented an unobvious step over the prior
art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007).
For these reasons, we sustain the Examiner's rejection of claim 8, as
well as claims 9-17 and 32-37, which were not argued with particularity
beyond those arguments advanced for claims 1 and 8. See App. Br. 9-10,
11; Reply Br. 2-8.
Claims 18-24 and 38--42
Claim 18 recites, among other limitations, "second encrypting the
encrypted missing portion of the media content file at the group of user
devices in response to a second encryption-decryption information to form a
second encrypted missing portion of the media content file." App. Br. 17.
The Examiner finds Wasilewski' s re-encryption of media contents teaches
the disputed limitation. See Ans. 17-18 (citing Wasilewski, i-fi-124--26, 29,
36). Appellants argue certain cited passages of Wasilewski "simply disclose
encrypting an instance (or program), using a content key to encrypt the
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program, encrypting multiple programs using the same content key, and
determining access rights of a subscriber" and do not teach or suggest
"second encrypting the encrypted missing portion." App. Br. 10-11.
We are persuaded of error. The pivotal difference between the
Examiner's position and Appellants' position is the construction of the
phrase "second encrypting" recited in claim 18. During prosecution claims
are given their broadest reasonable interpretation in light of the
Specification, In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997), without
importing limitations from the Specification into the claims, SuperGuide
Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
The plain language of claim 18 recites that the "second encrypting" is
performed on "the encrypted missing portion of the media content file."
App. Br. 17 (emphasis added). Further, the Specification states "an asset
may be additionally encrypted (i.e., super-encrypted) by the [content
delivery network] CDN such that only one of the [integrated
receiver/decoders] IRDs 1 lOa-1 lOn is able to decrypt the asset." Spec. i-f 40;
accord Spec. i-f 83 ("To allow additional encryption to be applied to the
received broadcast encrypted data packets prior to storage on the [hard disk
drive] HDD, the example IRD ... includes an [advanced encryption
standard] AES encryption circuit 527 that optionally applies additional
encryption to the received encrypted data packets."). Considering the plain
language of claim 18 in light of Appellants' Specification, we conclude the
claimed "second encrypting" step requires additionally encrypting content
that is already encrypted, as opposed to re-encryption of content that has
been decrypted, as cited by the Examiner in Wasilewski. See Ans. 17-18;
Wasilewski i-fi-124--25. Accordingly, we conclude the Examiner erred in
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finding Wasilewski' s re-encryption teaches the claimed "second encrypting"
in claims 18. See Ans. 17-18. We similarly conclude the Examiner erred in
finding Wasilewski' s re-encryption teaches the "second encrypting" as
required by claim 38. We reverse the Examiner's rejection of claim 18, as
well as claims 19-24 and 38--42, which include the same deficiency.
DECISION
The decision of the Examiner to reject claims 1-17 and 25-37 is
affirmed.
The decision of the Examiner to reject claims 18-24 and 38--42 is
reversed.
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 ).
See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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