Ex Parte Le Pelerin et al

Patent Trials and Appeals Board

Jan 7, 2019

14128166 - (D) (P.T.A.B. Jan. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/128,166 05/22/2014
157616 7590 01/09/2019
OBLON/KUDELSKI
1940 DUKE STREET
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Alain Le Pelerin
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.
516618US 9103
EXAMINER
ALCON, FERNANDO
ART UNIT PAPER NUMBER
2425
NOTIFICATION DATE DELIVERY MODE
01/09/2019 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALAIN LE PELERIN and MATTHIEU PIQUET 1
Appeal2017-003007
Application 14/128,166
Technology Center 2400
Before KAL YANK. DESHPANDE, JASON V. MORGAN, and
HUNG H. BUI, Administrative Patent Judges.
DESHPANDE, Administrative Patent Judge.
DECISION ON APPEAL 2
Appellants seeks review under 35 U.S.C. § 134(a) of the Examiner's
Final Rejection of claims 1-3, 5-12, and 14--19. Claims 4 and 13 have been
canceled. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
An oral hearing was held on November 8, 2017. A transcript of the oral
hearing will be made of record in due course.
We AFFIRM.
1 The real party in interest is the Assignee, Nagravision S.A. App. Br. 2.
2 Our Decision makes reference to Appellants' Reply Brief filed Dec. 15,
2016 ("Reply Br."), and Appeal Brief filed Apr. 8, 2016 ("App. Br."), and
the Examiner's Answer mailed Oct. 26, 2016 ("Ans."), and Final Office
Action mailed Oct. 8, 2015 ("Final Act.").
Appeal2017-003007
Application 14/128,166
INVENTION
Appellants' invention is directed to digital media players that store
digital media content. Spec. 1 :3-5. Specifically, Appellants' invention is
directed to receiving digital media content and providing conditional access
to the content through the use of a conditional access module (CAM). Id. at
1:3-11.
Independent claim 1 is illustrative of the claims and is reproduced
below:
1. A method for processing a broadcast transport stream
including content of a first type, content of a second type, and a
piece of metadata comprising encrypted switching information
associated with at least one alternative content using a media
player comprising a storage device for storing the alternative
content, a conditional access module, and a presentation module
to present a portion of the processed transport stream, the
method comprising:
decrypting the encrypted switching information using the
conditional access module of the media player; and
substituting content of the second type by at least part of
the associated alternative content based on the decrypted
switching information, thereby creating the portion of the
processed transport stream;
comparing a viewer profile and a content description
associated with the alternative content; and
based on the comparison of the viewer profile and the
content description, storing the substituted content of the
second type in the storage device.
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Application 14/128,166
REFERENCES
Candelore US 2005/0028193 Al Feb.3,2005
Kizuka US 2003/0188308 Al Oct. 2, 2003
Jagadeesan US 2006/0075449 Al Apr. 5, 2006
Tsusaka US 2003/0212810 Al Nov. 13, 2003
Shteyn US 2002/0162109 Al Oct. 31, 2002
Plotnick US 2002/0144262 Al Oct. 3, 2002
REJECTIONS
Claims 1-3, 5---6, 8, 10-12, 14--15, and 17 stand rejected under 35
U.S.C. § I03(a) as unpatentable over Candelore, Plotnick, and Kizuka.
Claims 9 and 18 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Candelore, Plotnick, Kizuka, and Jagadeesan.
Claims 7 and 16 stand rejected under 35 U.S.C. § I03(a) as obvious
over Candelore, Plotnick, Kizuka, and Tsusaka.
Claim 19 stands rejected under 35 U.S.C. § I03(a) as obvious over
Candelore, Plotnick, Kizuka, and Shteyn.
ISSUE
The issue whether the Examiner erred in rejecting claims 1-12 and
14--19 under 35 U.S.C. § I03(a) as obvious over the cited prior art3 turns on
whether the Candelore discloses "decrypting the encrypted switch
information using the conditional access module of the media player."
3 Appellants allege Candelore fails to disclose a limitation found in all of
the claims. Accordingly, Appellants' arguments are presented towards all of
the grounds of rejection set forth by the Examiner.
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Application 14/128,166
ANALYSIS
Appellants contend that Candelore fails to disclose "a method for
processing a broadcast content stream including ... a piece of metadata
comprising encrypted switching information" and "decrypting the
encrypting switching information using the conditional access module of the
media player." Specifically, Appellants argue that Candelore's "PIDs,"
"main content," or "criteria within the encrypted broadcast which informs
the switching to alternative content"4 are not "encrypted switching
information." App. Br. 3-7, 8-9; Reply Br. 2-5.
We disagree with Appellants. Claim 1 recites "a method for
processing a broadcast content stream including ... a piece of metadata
comprising encrypted switch information." Appellants do not contend that
an express or special definition for "metadata" is required. Under the
broadest reasonable interpretation, in light of the specification, the definition
of "metadata" includes "data that describes and gives information about
4 Appellants contend that the Examiner improperly asserted the "main
content" as disclosing the "encrypted switching information" for the first
time in an Advisory Action after the Final Rejection. App. Br. 9-10.
Appellants also contend that the Examiner improperly asserted that the
"criteria within the encrypted broadcast that informs the switching to
alternative content" as disclosing "encrypted switching information" for the
first time in Examiner's Answer. Reply Br. 3 ( citing Ans. 3--4 ). These
matters, however, are a petitionable and not an appealable. See In re
Schneider, 481 F.2d 1350, 1356--57, (CCPA 1973), and In re Mindick, 371
F.2d 892, 894, (CCPA 1967). See also the MPEP § 1002.02(c), item 3(a)
and § 1201 (9th ed. 2018). Thus, the relief sought by the Appellants would
have been properly presented by a petition to the Commissioner under 3 7
C.F.R. § 1.181 instead ofby appeal to this Board. Accordingly, we will not
further consider Appellants' allegation that the Examiner has improperly
relied on new evidence not presented in the Final Rejection.
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Application 14/128,166
other data."5 See Spec. 20:22-32. Within the context of claim 1,
"metadata" includes "switch information" that indicates to substitute content
to alternative content. See, e.g., id. Claim 1 further requires the step of
"decrypting the encrypted switching information using the conditional
access module of the media player."
As discussed above, the Examiner relies on Candelore to disclose this
limitation. Candelore discloses a method for content substitution to provide
an enhanced level of customization of television programming. Candelore
,r 26. In Candelore, content is received with portions identified by packet
identifiers (PIDs). Id. ,r 2 7. The content is examined to determine whether a
prescribed substitution criterion has been met, and, if the substitution
criterion is met, a content substitution is carried out. Id. ,r,r 27-28.
Appropriate instructions are sent from the cable system head end whenever
substitute content is to be used. Id. ,r 38. That is, Candelore's "substitution
criterion" that results in instructions being sent from the cable system head
discloses the claimed "switch information." Accordingly, we are not
persuaded by Appellants' argument that Can de lore fails to disclose "switch
information."
Appellants further argue that Candelore fails to disclose that the
"switching information" is encrypted. App. Br. 7-8. Appellants argue that
"[i]t is well known that not all information from the head end is encrypted,"
and nothing in Candelore discloses the "switching information" is encrypted.
Id. Appellants further argue that the claims require that the decrypting is
performed using the "conditional access module." Id. at 8.
5 Oxford English Dictionary, available at http://www.oed.com (last accessed
December 28, 2018).
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Application 14/128,166
We are not persuaded by Appellants' argument. Candelore discloses
that video content is received by tuner 607 in set-top box 600. Candelore
,r 144, Fig. 14. Demodulator 610 demodulates the video content, and the
demodulated video content is provided to PID decoder/demultiplexer/
descrambler circuit 614. Id. PID decoder/demultiplexer/descrambler circuit
614 "decrypts encrypted information in accordance with a decryption
algorithm to prevent unauthorized access to programming content." Id. A
person with ordinary skill in the art would glean from this disclosure that the
video content received by tuner 608 includes the substitution criterion, and,
therefore, the substitution criterion is decrypted by set-top box 600.
Candelore further discloses that set-top box 600 may further incorporate a
smart-card reader to communicate with a smart-card that serves as a
conditional access module (CAM). Id. ,r 147. Candelore discloses that the
use of CAMs are conventional and are used for authenticating users and
transactions. Id. Accordingly, a person with ordinary skill in the art would
understand that PID decoder/demultiplexer/descrambler circuit 614 of set-
top box 600 may incorporate a CAM, such as a smart-card, in order to
authenticate users and transactions for decrypting content. As such, we find
that Candelore discloses "a method for processing a broadcast content
stream including ... a piece of metadata comprising encrypted switch
information."
Appellants further argue that Candelore cannot disclose the limitations
of claims 8 and 9, because claim 8 requires that the "metadata is an
electronic . . . message comprising ... switching information." Reply Br. 5.
We are not persuaded by Appellants. First, Appellants present this argument
for the first time in the Reply Brief, and Appellants have not shown any
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cause as to why this issue was first raised in the Reply Brief. Thus, this
argument is untimely. See 37 C.F .R. § 41.41 (b )(2) (2015); Ex parte Borden,
93 USPQ2d 1473, 1474 (BPAI2010) (Informative) ("thereplybrief[isnot]
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner's rejections, but were not.").
To the extent Appellants are attempting to demonstrate cause by the
Examiner had not previously cited paragraph 27, and "as a matter of
fairness," Appellants' new arguments towards claims 8 and 9 should be
considered, we disagree with Appellants that this is sufficient cause.
Candelore was relied on as prior art in the Final Office Action, and
Candelore' s disclosure of decrypting video content that includes substitution
criterion, and evaluating the substitution criterion to determine whether to
instruct the substitution of content was known to Appellants. Final Act. 4--
1 O; Candelore ,r,r 27, 3 8, 144.
Even assuming, arguendo, that "as a matter of fairness" we consider
Appellants' argument, we are not persuaded by Appellants' argument.
Appellants generally allege that "all of these 'criteria' [cited by the
Examiner] are in the content and therefore cannot be in an electronic
message." Reply Br. 5. Appellants do not provide any further evidence or
argument to distinguish the claims from the prior art. Accordingly,
Appellants' argument is tantamount to a mere allegation of patentability.
See 37 C.F.R. § 4I.37(c)(l)(iv) (2015) ("A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim."); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
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Application 14/128,166
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.").
Furthermore, the Specification discloses that control messages and
electronic control message are typically within the video content that is
received by the user unit and decrypted by the CAM. Spec. 4: 17-21, 5 :24--
6:7. As discussed above, we find that Candelore discloses using a CAM to
decrypt video content, which includes electronic messages, such as
substitution criterion, to determine whether to instruct the substitution of
content. Candelore ,r,r 27, 3 8, 144. Accordingly, we are not persuaded by
Appellants' argument that Candelore fails to disclose the limitations of claim
8, and as incorporated by claim 9.
CONCLUSION
The Examiner did not err in rejecting claim 1-3, 5-6, 8, 10-12, 14--
15, and 17 under 35 U.S.C. § 103(a) as obvious over Candelore, Plotnick,
and Kizuka.
The Examiner did not err in rejecting claims 9 and 18 under 35 U.S.C.
§ 103(a) as obvious over Candelore, Plotnick, Kizuka, and Jagadeesan.
The Examiner did not err in rejecting claim 7 and 16 under 35 U.S.C.
§ 103(a) as obvious over Candelore, Plotnick, Kizuka, and Tsusaka.
The Examiner did not err in rejecting claim 19 under 35 U.S.C.
§ 103(a) as obvious over Candelore, Plotnick, Kizuka, and Shteyn.
DECISION
We affirm the rejection of claims 1-3, 5-12, and 14--19.
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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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