Ex Parte Karaoguz et al

Board of Patent Appeals and Interferences

Feb 4, 2011

10672653 (B.P.A.I. Feb. 4, 2011)

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.
10/672,653 09/26/2003 Jeyhan Karaoguz 14311US02 8223
7590 02/04/2011
CHRISTOPHER C WINSLADE
MCANDREWS HELD & MALLOW LTD
500 WEST MADISON ST
34TH FLOOR
CHICAGO, IL 60661
EXAMINER
LUONG, ALAN H
ART UNIT PAPER NUMBER
2427
MAIL DATE DELIVERY MODE
02/04/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JEYHAN KARAOGUZ and JAMES D. BENNETT
____________________

Appeal 2009-008208
Application 10/672,6531
Technology Center 2400
____________________

Before ALLEN R. MacDONALD, MARC S. HOFF, and
ELENI MANTIS MERCADER, Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL2

1 The real party in interest is Broadcom Corporation.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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Application 10/672,653

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-25. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appellants’ invention relates to a system and method for billing and
authentication in a media exchange network using either a card or an
independent server (Spec. ¶¶ [10]-[13], [28]). The system and method allow
a user to access media from more than one communication device (i.e.,
laptop or set-top box) at different locations (Spec. ¶ [35]; claims 1, 10, 17,
21).
Independent claims 1 and 21 are exemplary:
1. A system for billing and authentication of a communication device
in a communication network, comprising:
at least one communication device deployed in at least one location;
a communication network communicatively coupled to the at least
one location;
information content residing on one or both of the communication
network and the at least one location; and
a card carrying information related to one or more user-defined
selections of the information content, wherein the card allows the at least
one communication device to access the user-defined selections identified by
the card, once the card is communicatively coupled to the at least one
communication device.
21. A method for billing and authentication of a communication
device in a communication network, comprising:
selecting media exchange services to be provided to a first
communication device at a first geographic location and/or a second
communication device at a second geographic location, the media exchange
services relating to a user-defined selection of information content that is
available on the communication network;
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establishing a subscription with an independent server located on the
communication network, the subscription allowing for access by the first
communication device and the second communication device to the selected
media exchange services available on the communication network;
entering identification information via the first communication device,
the identification information validating the subscription to the selected
media exchange services; and
accessing the selected media exchange services by the first
communication device after entry of the identification information.
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Spies US 6,055,314 Apr. 25, 2000
Thomas US 2002/0059621 A1 May 16, 2002
Hendricks US 7,134,131 B1 Nov. 7, 2006
Claims 1-4, 6-8, and 10-25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Thomas in view of Spies.
Claims 5 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thomas and Spies, further in view of Hendricks.

ISSUES
With respect to claims 1-4 and 6-8, Appellants argue that Thomas and
Spies fail to disclose or suggest a card carrying information related to user-
defined selections (App. Br. 7-10). Appellants contend that the keys or other
information stored in Spies’s IC card do not identify an actual user-defined
selections (Reply Br. 4-5).
Similarly, with respect to claims 17-20, Appellants argue that Thomas
and Spies fail to disclose or suggest a card giving access to selected media
exchange services on a network, the card carrying information related to the
selected media exchange services (App. Br. 15-18). In response, the
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Examiner asserts that the claim language does not preclude the information
on Spies’s IC card 50 from being “information related to one or more user-
defined selections” (claim 1), and finds that Spies nonetheless teaches
information stored on the IC card 50 (such as encryption/decryption
information 54 to permit viewing of video content) that is related to
purchased content, which can be considered user-defined selections (Ans. 4-
7, 21-22).
With respect to claims 10-16, Appellants argue that Spies fails to
disclose or suggest the independent server that operates upon receipt of
authentication and billing information related to payment, billing, or content
access (App. Br. 11-14). In response, the Examiner points out that Thomas
(¶ [0080]) was relied upon as teaching the authentication feature, and Spies
(Figs. 9-11) teaches the billing feature and an independent server 210 (Ans.
10, 23-24).
With respect to claims 21-25, Appellants argue that Thomas and Spies
fail to disclose or suggest establishing a subscription with an independent
server to allow access by first and second communication devices to the
selected media exchange services available on the network (App. Br. 18-21).
Specifically, Appellants contend that column 13, line 55, through column
14, line 7, of Spies is silent as to providing a subscription that allows access
to network services by first and second communication devices, and instead
is tied to a single user (App. Br. 20-21; Reply Br. 8-9). In response, the
Examiner asserts that ordering a video asset in Spies is equivalent to a
subscription where a subscriber purchases a product for a period of time, and
does not otherwise explain how Spies’s Figure 9 and column 13, line 55, to
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column 14, line 7, disclose or suggest providing access to two
communication devices.
Appellants’ contentions present us with the following issues:
1. Do Thomas and Spies, taken singly or in combination, teach or
suggest a card carrying information related to user-defined selections, as
recited in independent claims 1 and 17?
2. Do Thomas and Spies, taken singly or in combination, teach or
suggest an independent server that provides media exchange services upon
receipt of authentication and billing information for user-defined selections,
as claim 10 requires?
3. Does Spies disclose or suggest establishing a subscription with an
independent server to allow access by first and second communication
devices to selected media exchange services, as claim 21 requires?
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed October 8, 2008), the Examiner’s Answer (“Ans.,” mailed
December 3, 2008), and the Reply Brief (“Reply Br.,” filed February 2,
2009) for their respective details.

FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Thomas
1. Thomas teaches a method of purchasing a video-on-demand
program using a remote control 300 (Fig. 3). The user selects a video-on-
demand program using display screens 450, 500, 550, and 600 (Figs. 4B,
5A, 6A; ¶¶ [0077]-[0079]), and may purchase the program upon
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authentication of “the user’s login identification and associated password
information” or “[o]ther user identification techniques” (¶ [0080]). Upon
entering valid login information and pressing purchase button 557, the
selected video-on-demand program is authorized for distribution from
remote server network 110 (Fig. 1; ¶ [0081]).
Spies
2. Spies teaches an integrated circuit card (IC card 50) or smart
card that “is configured with cryptographic functionality to support the
secure purchase of the decryption capabilities from the video merchant [24]”
(col. 2, ll. 34-36). The IC card is used together with the user’s set-top box or
other video computing device to decrypt a selected video content program
(col. 2, ll. 36-42). IC card 50 carries public and private encryption keys
54/56 to allow a user at a communication device to purchase a selected video
and have the selected video distributed over a network to the user’s
communication device (col. 2, l. 54 to col. 3, l. 24; col. 6, ll. 11-58).
3. Spies further teaches that upon receipt of billing and
authentication information being entered related to the program requested,
the selected program is distributed to the user from the headend server 210
(see Figs. 10, 11 (including PIN verification step 302, video selection step
306, download/distribution step 308, authentication step 314, and billing
step 316); col. 15, ll. 1-66). A cable operator 202 can “perform the billing
and collection tasks resulting from subscriber rentals of video content
programs” (col. 14, ll. 5-7).
4. Spies describes a secure video purchase and delivery system
(Fig. 9) embodied in an interactive entertainment network system 200 as
follows: “system 200 has a cable operator 202 interconnected to multiple
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subscribers 204 via an interactive network 206” (col. 13, ll. 58-60). The
cable operator 202 provides selected video programs to subscribers 204 via
communication over interactive network 206 (col. 13, ll. 64-67). In this
manner, video-on-demand is provided to the subscriber’s home (col. 13, l.
67 to col. 14, l. 4).

PRINCIPLES OF LAW
On the issue of obviousness, the Supreme Court has stated that “[t]he
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation.” KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007). Further, the Court stated “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Id. at 416. “One of the ways
in which a patent’s subject matter can be proved obvious is by noting that
there existed at the time of the invention a known problem for which there
was an obvious solution encompassed by the patent’s claims.” Id. at 419-
420.

ANALYSIS
§ 103 REJECTION OVER THOMAS AND SPIES
We select (i) claim 1 as representative of the group of claims
consisting of claims 1-4 and 6-8, (ii) claim 10 as representative of the group
of claims consisting of 10-16, (iii) claim 17 as representative of the group
consisting of claims 17-20, and (iv) claim 21 as representative of the group
of claims consisting of claims 21-25, pursuant to our authority under 37
C.F.R. § 41.37(c)(1)(vii).
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Representative Claims 1 and 17
Appellants’ arguments, summarized supra, are not persuasive to
establish that the Examiner erred in rejecting representative claims 1 and 17
as being taught or suggested by Thomas and Spies. The Examiner finds
(Ans. 4-7, 22), and we agree, that Spies teaches a card (i.e., IC card 50) that
carries information related to (i) user-defined selections of information
content (i.e., videos), or (ii) selected media exchange services relating to the
user-defined selections of the information content (FF 2). The card carries
public and private encryption keys 54, 56 to allow a user at a communication
device to purchase a selected video and have the selected video distributed
over a network to the user’s communication device (FF 2). We agree with
the Examiner (Ans. 4-7, 22) that information on a card that is related to
user-defined selections of information content (i.e., a selected video
program) encompasses Spies’s encryption/decryption information 54/56 on
card 50 which is used for distributing a selected video to a user at the user’s
set-top box or other computing device.
Because Appellants have not shown that the Examiner erred in
rejecting claims 1 and 17 as taught or suggested by Thomas and Spies, we
sustain the Examiner’s § 103 rejection of claims 1-4, 6-8, and 17-20.
Representative Claim 10
Appellants’ arguments (App. Br. 11-14), discussed supra, are not
persuasive to establish that the Examiner erred in rejecting representative
claim 10 as being taught or suggested by Thomas and Spies. The Examiner
finds, and we agree, that Thomas teaches authentication of a user and, in
response to verification, distributing a selected video program from a server
110 (FF 1; Ans. 9-10), and Spies teaches performing billing and
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authentication before providing a video encryption key and video download
to a user from headend server 210 (FF 3; Ans. 10, 23-24). Thus, Appellants’
argument (App. Br. 11-12) that “the combination of Thomas-Spies does not
disclose or suggest at least the limitation found in claim 10 of ‘the
independent server . . . provides media exchange services . . . upon receipt of
authentication and billing information for the one or more user-defined
selections from the first communication device’” is unpersuasive.
Because Appellants have not shown that the Examiner erred in
rejecting claim 10 as taught or suggested by Thomas and Spies, we sustain
the Examiner’s § 103 rejection of claims 10-16.
Representative Claim 21
Appellants’ argument (App. Br. 20-21; Reply Br. 8-9) that Thomas
and Spies fail to disclose or suggest the feature recited in claim 21 of
establishing a subscription with an independent server to allow access by
first and second communication devices to selected media exchange services
is convincing. Specifically, we find that Spies (column 13, line 65 to
column 14, line 7) does not disclose, teach, or suggest allowing access by
two communication devices using identification information entered at only
one location or communication device. Spies only teaches allowing a single
subscriber 204 to select and access video programs from a cable operator
202 over network 206 to get video-on-demand at that subscriber’s home (FF
4). Appellants are correct (Reply Br. 8-9) that Spies’s disclosure only
relates to providing access to a single user 204 at a specific communication
device (at that user’s home), as opposed to first and second communication
devices (multiple devices 204 at multiple user’s homes) having access based
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on the authentication at the first communication device as set forth in claim
21.
Because Appellants have shown that the Examiner erred in rejecting
claim 21, we do not sustain the Examiner’s § 103 rejection of claims 21-25.
§ 103 REJECTION OVER THOMAS, SPIES, AND HENDRICKS
Appellants only argue that claims 5 and 9 are allowable for the same
reasons provided as to claim 1 from which they depend (App. Br. 21).
Because we find supra that the Examiner did not err in finding parent claim
1 to be taught or suggested by Thomas and Spies, we therefore find no error
in the Examiner’s § 103 rejection of claims 5 and 9 over Thomas and Spies
in view of Hendricks for the same reasons.

CONCLUSIONS
1. Spies teaches a card carrying information related to user-defined
selections, as required by claims 1 and 17.
2. The combination of Thomas and Spies teaches or suggests an
independent server that provides media exchange services upon receipt of
authentication and billing information for user-defined selections, as
required by claim 10.
3. Neither Thomas nor Spies disclose or suggest establishing a
subscription with an independent server to allow access by first and second
communication devices to selected media exchange services, as required by
claim 21.

ORDER
The Examiner’s rejections of claims 1-20 are affirmed.
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The Examiner’s rejection of claims 21-25 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)(1)(iv).

AFFIRMED-IN-PART

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CHRISTOPHER C WINSLADE
MCANDREWS HELD & MALLOW LTD
500 WEST MADISON ST
34TH FLOOR
CHICAGO, IL 60661