Ex Parte Kamieniecki et al

Patent Trial and Appeal Board

Sep 15, 2016

13557595 (P.T.A.B. Sep. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/557,595
124177 7590
Fox Rothschild LLP
997 Lenox Drive
Building 3
FILING DATE
07/25/2012
09/19/2016
Lawrenceville, NJ 08648-2311
FIRST NAMED INVENTOR
John P. Kamieniecki
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.
106751.00191 2234
EXAMINER
VICTORIA, NARCISO F
ART UNIT PAPER NUMBER
2498
NOTIFICATION DATE DELIVERY MODE
09/19/2016 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):
ipdocket@foxrothschild.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte JOHN P. KAMIENIECKI, TAT KEUNG CHAN, KEVIN T.
CHANG, and ALEXANDER MEDVINSKY
Appeal2015-004218
Application 13/557,595
Technology Center 2400
Before JAMES R. HUGHES, NORMAN H. BEAMER, and
KAMRAN JIVANI, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) the Examiner's Final
Rejection of claims 1-25. 1 We have jurisdiction over the pending rejected
claims under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Motorola Mobility LLC as the real party in interest.
(App. Br. 3.)
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Application 13/557,595
THE INVENTION
Appellants' disclosed and claimed invention is directed to transcoding
secure content for a media processor. (Abstract.) Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A system for use with secure content in a first format and
a key, said system comprising:
a media processor operable to obtain the key;
a transcoder operable to receive the secure content, to
receive the key from said media processor, to decrypt the secure
content with the key and to generate decrypted content based on
the secure content; and
a transcoding device operable to transcode the decrypted
content into transcoded content of a second format,
wherein said transcoder is operable to obtain a re-
encryption key from said media processor, and
wherein said transcoder is further operable to encrypt the
transcoded content into encrypted transcoded content using the
re-encryption key.
REJECTION
The Examiner rejected claims 1-25 under 35 U.S.C. § 103(a) as being
unpatentable over Moroney et al. (US 2008/0015997 Al, pub. Jan. 17, 2008)
and Candelore et al. (US 7,839,998 B2, issued Nov. 23, 2010). (Final Act.
5-24.)
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Application 13/557,595
ISSUE ON APPEAL
Appellants' arguments in the Appeal Brief present the following
issue:2
Whether the Examiner erred in finding the combination of Moroney
and Candelore teaches or suggests the independent claim 1 limitation,
"wherein said transcoder is further operable to encrypt the transcoded
content into encrypted transcoded content using the re-encryption key," and
the similar limitation recited in independent claims 11 and 22. (App. Br.
11-18.)
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner errs. We disagree with Appellants' arguments,
and we adopt as our own ( 1) the pertinent findings and reasons set forth by
the Examiner in the Action from which this appeal is taken (Final Act. 5-24)
and (2) the corresponding reasons set forth by the Examiner in the
Examiner's Answer in response to Appellants' Appeal Brief (Ans. 24--27).
We concur with the applicable conclusions reached by the Examiner and
emphasize the following.
In finding that Moroney and Candelore teach or suggest the subject
matter of the independent claims, the Examiner relies on the disclosure in
Moroney of a "PVR," or personal video recorder, such as a set top box,
2 Rather than reiterate the arguments of Appellants and the findings of the
Examiner, we refer to the Appeal Brief (filed Jul. 23, 2014); the Reply Brief
(filed Feb. 13, 2015); the Final Office Action (mailed Feb. 24, 2014); and
the Examiner's Answer (mailed Dec. 18, 2014) for the respective details.
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Application 13/557,595
which decrypts incoming digital video information, transcodes the
information into a different format (e.g., into a different resolution), re-
encrypts the transcoded information, and securely sends it to a "PVP," or
portable video player, such as a cellular phone or laptop computer. (Final
Act. 5---6; Moroney Abstract, Fig. 1, i-fi-f 14--22.) In particular, as to the claim
limitation at issue, the Examiner relies on the aforementioned re-encryption
of the digital information by the PVR before it is sent to the PVP. (Final
Act. 6; Moroney i-f 19.) The Examiner further relies on the disclosure in
Candelore of a transcoder which converts decrypted video information
received from a host into a different format and then re-encrypts it and sends
it back to the host. (Final Act. 6; Candelore Abstract, Fig. 2, col. 3, 1. 66-
col. 4, 1. 20.)
Appellants argue the Examiner errs in finding Moroney and
Candelore teach or suggest the requirement that the transcoder encrypts the
transcoded content using a re-encryption key. (App. Br. 11.) In particular,
Appellants assert the Examiner erroneously finds that the PVP disclosed in
Moroney is the claimed transcoder, whereas the re-encryption in Moroney
relied on by the Examiner is performed by the PVR, which the Examiner
associates with the claimed media processor. (App. Br. 11-12.) Appellants
further argue, citing Ex Parte Koutsky, BPAI Appeal No. 2008-0557 (Sept.
23, 2008), even if the Examiner associates the PVP with the claimed
transcoder, that component cannot also be the claimed media processor -
the transcoder and the media processor must be separate devices, according
to Appellants. (App. Br. 13.)
Appellants' arguments are unpersuasive. Appellants focus only on the
Examiner's reliance on Moroney, whereas the Examiner's rejection is
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grounded on the combination of Moroney and Candelore. Non-obviousness
cannot be established by attacking references individually where, as here,
the ground of unpatentability is based upon the teachings of a combination
of references. In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). Rather, the test for obviousness is whether the combination of
references, taken as a whole, would have suggested the patentee's invention
to a person having ordinary skill in the art. In re Keller, 642 F.2d 413, 425
(CCPA 1981).
In addition, Appellants mischaracterize the Examiner's rejection by
asserting the Examiner equates the claimed transcoder with the PVP of
Moroney. (App. Br. 12.) To the contrary, as discussed above, the Examiner
relies on the disclosed transcoder of Candelore, together with the disclosed
PVR transcoder in Moroney, as teaching or suggesting the claim element at
issue. (Final Act. 6-7; Ans. 25-26.)
Finally, Appellants' reliance on Ex Parte Koutsky is misplaced.
There, in the context of anticipation, the Board relied on Lantech Inc. v. Keip
Machine Co., 32 F.3d 542, 547 (Fed. Cir. 1994), for the proposition that
when a claim requires two separate elements, one element having two
separate functions will not suffice to meet the terms of the claim. This
reasoning is not applicable to the obviousness analysis here, particularly in
light of the statement in the Specification that the media processor and the
transcoder "may be combined as a unitary device." (Spec. i-f 6.) See Powell
v. Home Depot U.S.A., 663 F.3d 1221, 1231-32 (Fed. Cir. 2011). We agree
with the Examiner, that the claims are reasonably construed to allow a
processor, such as that disclosed in Moroney, to execute software routines
that act as a media processor, and separately execute routines that act as a
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transcoder. (Ans. 26; Moroney Fig. 4, iii! 33, 34.) Accordingly, we are not
persuaded the Examiner errs in finding Moroney and Candelore teach or
suggest the independent claim 1 limitation, "wherein said transcoder is
further operable to encrypt the transcoded content into encrypted transcoded
content using the re-encryption key."
CONCLUSIONS
For the reasons stated above, we sustain the obviousness rejections of
independent claims 1, 11 and 22. We also sustain the obviousness rejections
of claims 2-10, 12-21, and 23-25, which rejections are not argued
separately with particularity. (App. Br. 18.)
DECISION
We affirm the Examiner's rejections of claims 1-25.
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
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