Ex Parte Kamins et alDownload PDFPatent Trial and Appeal BoardDec 31, 201310547911 (P.T.A.B. Dec. 31, 2013) Copy Citation 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. 10/547,911 05/24/2007 Josh Kamins 7251/111048 7548 24628 7590 12/31/2013 Husch Blackwell LLP Husch Blackwell Sanders LLP Welsh & Katz 120 S RIVERSIDE PLAZA 22ND FLOOR CHICAGO, IL 60606 EXAMINER TABOR, AMARE F ART UNIT PAPER NUMBER 2434 MAIL DATE DELIVERY MODE 12/31/2013 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 JOSH KAMINS, STEPHANIE WALD, YAACOV BELENKY, CARMI BOGOT, GABI ICKOWICZ, URI STROH, and ABRAHAM WACHTFOGEL ____________________ Appeal 2011-006706 Application 10/547,911 Technology Center 2400 ____________________ Before ST. JOHN COURTENAY III, THU A. DANG, and CARL W. WHITEHEAD JR., Administrative Patent Judges. DANG, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006706 Application 10/547,911 2 I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 1, 3-13, and 15-24 (App. Br. 2). Claims 2 and 14 have been canceled (App. Br. 2 and 3). Claims 25-47 have been allowed (Ans. 2). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. A. INVENTION Appellants’ invention is directed towards a method for protecting digital content compressed encrypted digital content, which produces output from the compressed digital content based upon determining if a clear compressed output format is allowable and an atomic operation including a combination of operation, such as decrypting and decompressing, that are able to be performed only together and not separately (Abstract; Spec. 14:26-28). B. ILLUSTRATIVE CLAIM Claim 1 is exemplary: 1. A method for protecting digital content comprising: receiving compressed encrypted digital content; determining an output format based, at least in part, on all of the following: a user-requested output format; received control information; and a rule determining whether a clear compressed output format is producing output from the compressed digital content based on a result of the determining, the producing comprising an atomic operation comprising: Appeal 2011-006706 Application 10/547,911 3 decrypting in accordance with a second encryption method; and decompressing, wherein, if the rule does not allow clear compressed output format, the compressed encrypted digital content is provided in a form which prevents production of clear compressed output in the producing step, the form which prevents production of clear compressed output comprises compressed encrypted digital content, the encrypted digital content comprising additionally encrypted digital content, the additional encryption being in accordance with the second encryption method, and the atomic operation comprising a combination of operations being able to be performed only together, and not separately. C. REJECTION The prior art relied upon by the Examiner in rejecting the claims on appeal is: Maillard US 6,286,103 B1 Sept. 4, 2001 Malvar US 7,069,590 B1 June 27, 2006 Claims 1, 3-13, and 15-24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Maillard and Malvar. II. ISSUE The dispositive issue before us is whether the Examiner has erred in determining that the combination of Maillard and Malvar teaches or would have suggested “producing output from the compressed digital content based on a result of the determining, the producing comprising an atomic operation comprising: decrypting in accordance with a second encryption method; and decompressing, wherein, . . . the atomic operation comprising a combination of operations being able to be performed only together, and not separately” (claim 1, emphasis added). Appeal 2011-006706 Application 10/547,911 4 III. FINDINGS OF FACT The following Findings of Fact (FF) are shown by a preponderance of the evidence. Maillard 1. Maillard discloses a digital television broadcast and reception system 1000 including a receiver/decoder 2020 that decodes a compressed MPEG-2 signal into a television signal for the television set 2022 (Fig. 1; col. 5, ll. 15-39). If the program is not scrambled, the receiver/decoder 2020 decompresses the data and transforms the signal into a video signal for transmission to television set 2022 (col. 7, ll. 9-11). If the program is scrambled, on the other hand, the receiver/decoder 2020 decrypts the Entitlement Control Message (ECM) and decompresses the MPEG-2 stream (col. 7, ll. 12-22). Malvar 2. Malvar discloses an architecture and method for protecting data streams in an operating system where the process at the client begins with the receipt of an encrypted and compressed data stream (e.g., audio, video) at a media player 102 that uses tools 104 to decrypt and decompress the stream, resulting in a PCM data stream (Figs. 3, 4, and 5, step 204; col. 3, ll. 61-62 and col. 7, ll. 12-17). IV. ANALYSIS Claims 1, 3-13, and 15-24 Appellants contend that “box 104 in block diagrams Figures 3 and 4 of Malvar and box 204 in flow diagram Figure 5 of Malvar . . . indicate that Appeal 2011-006706 Application 10/547,911 5 decryption and decompression both occur, but do not indicate that they are able to be performed ‘only together, and not separately . . .’” (App. Br. 5-6, emphasis omitted). Appellants argue that “Malvar does not limit operation of its decryption and decompression tools 104 to being performed only together and not separately” (App. Br. 7, emphasis omitted). Appellants further argue that the claim limitation “‘able to be performed only together, and not separately’ cannot be construed so broadly as to read on operations that can be performed separately” (id.). However, the Examiner finds that “Millard explicitly discloses the operations of decrypting and decompressing (i.e., ‘atomic operation’),” when it “discloses a receiver/decoder . . . that ‘decompresses’ unscrambled program” and when “the program is scrambled, the system of Millard ‘decrypts the ECM’ and ‘decompresses the MPEG-2 stream’” (Ans. 7). The Examiner finds further that “Malvar cures the deficiency Millard because Malvar discloses a processor . . . that ‘decompress and decrypt’ a content” in Figures 3-5 (id.). “[W]ith broadest but reasonable claim interpretation, the combined references teach [Appellants’] claimed ‘atomic operation’ (i.e., performing decrypting & decompressing together)” (id.). We give the claim its broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Claim 1 recites an “atomic operation” comprising a combination of operations “being able to” be performed only together and not separately. We find such “being able to” language to be a statement of intended purpose of the operations comprised in the atomic operation, which does not narrow the claim. Particularly, an intended use will not narrow the scope of the claim because it merely defines a context in which the invention operates. Appeal 2011-006706 Application 10/547,911 6 Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Consequently, we give claim 1 its broadest reasonable interpretation as merely requiring atomic operation having a combination of operations that are capable of being performed only together and not separately. Maillard discloses a digital television broadcast and reception system including a receiver/decoder that decodes a compressed MPEG-2 signal into a television signal (FF 1). Depending upon whether the program is scrambled or not, the receiver/decoder either decompresses the program or decrypts the ECM while decompressing the MPEG-2 stream (id.). We find that the combination of operations comprises the atomic operation including decrypting and decompressing. In addition, Malvar discloses an architecture and method for protecting data streams in an operating system, where the process includes decrypting and decompressing the data stream (FF 2). Since Malvar’s Figure 5 discloses that both operations of decrypting and decompressing exist in one step, we find that the method comprises atomic operation including a combination of operations (decrypting and decompressing) that are capable of being performed only together and not separately In view of our claim construction above, we find that the combination of Maillard and Malvar at least suggests the claim limitations of claim 1. Accordingly, we find no error in the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) over Maillard in view of Malvar. Further, independent claims 13 having similar claim language and claims 3-12 and 15-24 (depending from claims 1 and 13) which have not been argued separately, fall with claim 1. Appeal 2011-006706 Application 10/547,911 7 V. CONCLUSION AND DECISION The Examiner’s rejection of claims 1, 3-13, and 15-24 under 35 U.S.C. § 103(a) 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)(1)(iv). AFFIRMED ke Copy with citationCopy as parenthetical citation