Ex Parte Peterka et al

Patent Trial and Appeal Board

May 12, 2016

12749130 (P.T.A.B. May. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
121749,130
124177 7590
Fox Rothschild LLP
997 Lenox Drive
Building 3
FILING DATE
03/29/2010
05/16/2016
Lawrenceville, NJ 08648-2311
FIRST NAMED INVENTOR
Petr Peterka
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.
106751.00441 6501
EXAMINER
REV AK, CHRISTOPHER A
ART UNIT PAPER NUMBER
2431
NOTIFICATION DATE DELIVERY MODE
05/16/2016 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
Ex parte PETR PETERKA, GERALD R. JOHNSON,
GEETHA MANGALORE, and RAFIE SHAMSAASEF
Appeal2014-006498
Application 12/749,130
Technology Center 2400
Before JOSEPH L. DIXON, NATHAN A. ENGELS, and
CARLL. SILVERMAN, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-006498
Application 12/749,130
STATEMENT OF THE CASE 1
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
24. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The claims are directed to secure transcoding of content. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A source device having encrypted content m a first
encoding standard, the source device comprising:
a data storage configured to store a first rights data file,
wherein the first rights data file includes a first content ID, and a
first encryption key, and indicates content rights including
whether transcoding of the encrypted content in the first
encoding standard to encrypted content in a second encoding
standard is allowed;
a processor configured to
determine the content rights for the encrypted content in
the first encoding standard using the first rights data file;
in response to determining the transcoding of the
encrypted content into the second encoding standard is allowed,
create a second rights data file for transcoded content in the
second encoding standard, wherein the second rights data file
includes a second content ID, and a second encryption key, and
indicates second content rights;
1 Appellants indicate that Google Technology Holdings, LLC. is the current
real party in interest. Motorola Mobility LLC was the prior real party in
interest in this Appeal by virtue of an executed assignment from the named
inventors of their entire interest to General Instrument Corporation and two
subsequent assignments-one from General Instrument Corporation to
General Instrument Holdings, Inc. and another from General Instrument
Holdings, Inc. to Motorola Mobility, LLC. (App. Br. 3).
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Application 12/749,130
perform a key management operation including
communicating a decryption key for the encrypted content in the
first encoding standard and the second encryption key for the
encrypted content in the second encoding standard to a
transcoder; and
transfer the encrypted content in the first encoding
standard to the transcoder.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Levy et al.
Seeman
Hug et al.
Dutta et al.
Moroney et al.
Ayars et al.
US 2002/0186844 Al
US 2003/0200459 Al
US 2005/0132208 Al
US 7,376,623 B2
US 2009/0296940 Al
US 7,681,035 Bl
Dec. 12, 2002
Oct. 23, 2003
June 16, 2005
May 20, 2008
Dec. 3, 2009
Mar. 16, 2010
REJECTIONS
The Examiner made the follo\~1ing rejections:
Claim 22 was rejected under 35 U.S.C. § 112, 4th paragraph, as being
of improper dependent form for failing to further limit the subject matter of
the claim upon which it depends, or for failing to include all the limitations
of the claim upon which it depends. Parent claim 13 recites the limitation
from dependent claim 22.2
Claims 1, 7, 9, 10, 12, 13, and 21-24 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Ayars in view of Dutta.
2 Appellants indicated that dependent claim 22 was to be canceled. (Reply
Br. 1 ). The Examiner should cancel dependent claim 22 in any further
prosecution, and we do not further address this moot rejection.
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Application 12/749,130
Claims 2, 3, 5, and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ayars in view of Dutta applied above, and further in view
of Levy.
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ayars in view of as applied above, and further in view of
Hug.
Claims 2 and 7-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ayars in view of Dutta as applied above, and further in
view of Moroney.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ayars in view of Dutta as applied above, and further in
view of Seeman.
Claims 14--16 and 18-20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Ayars in view of Dutta in view of Moroney, and
further in view of Hug.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ayars in view of Dutta in view of Moroney in view of
Hug as applied above, and further in view of Seeman.
ANALYSIS
Independent Claims 1, 13, 14, and 18
Independent Claims 1, 13, 14, and 18 are rejected under two different
rejections under 35 U.S.C. § 103, but Appellants present arguments to the
claims together. (App. Br. 12-20).
Appellants' main contention is that the combination of the Ayars
reference and the Dutta reference does not teach or suggest the claimed
"create a second rights data file for transcoded content in the second
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encoding standard, wherein the second rights data file includes a second
content ID, and a second encryption key, and indicates second content
rights." (App. Br. 13). We address claim 1 as the illustrative claim because
independent claims 13, 14, and 18 contain similar limitations regarding the
creation or receiving second rights data file including a second content ID,
and a second encryption key.
The Examiner disagrees with Appellants and maintains:
the Examiner has relied upon Ayars for the creation of digital
rights management (DRM) rules, which is interpreted as the
claimed "rights data file", see column 7, lines 5-9. The teachings
of Ayars disclose of an input file, which is interpreted as the "data
file encoded in a first encoded standard." The received file is
accordingly formatted, equivalent to the claimed "transcoding",
into a second format resulting in an output file, which is
equivalent to the claimed "second encoding standard", see
column 8[,] lines 35-51 and column 9, line 55 through column
10, line 20. The Examiner is not interpreting the "objects" of
Ayars as being equivalent to the claimed "second rights data
file". The "objects" of Ayars, for example disclose of the
creation of DRivI rules for the output file by instantiating a rules
object, see column 10, lines 9-11. One of ordinary skill would
recognize that object oriented programming is known to
represent concepts as objects that have various data properties
which are attributes that describe the file. In the instant case, the
objects of Ayars which the Appellant argue are the actual digital
rights management that the control access and/or distribution of
data to that only authorized consumers can access the content,
see column 1, line 58 through column 2, line 3 which is known
to one of ordinary skill in the art.
(Ans. 3).
Appellants further contend that the excerpts relied upon by the
Examiner in the Ayars reference teaches or suggests creating the claimed
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"second data rights file" that "includes a second content ID, and a second
encryption key." (App. Br. 17).
The Examiner further maintains:
The Examiner disagrees with the Appellant's assertion.
The Examiner has addressed the argument pertaining to the
"second digital rights file", please refer above to Argument (I).
The reformatted (transcoded) output file of Ayars contains an
identifier which includes the name of the output file, see column
8, lines 5-10. Although the teachings of Ayars fails to explicitly
label the identifier as a "second identifier" as claimed by the
Appellant, this identifier is directly related to the received file is
accordingly formatted, equivalent to the claimed "transcoding",
into a second format resulting in the creation of an output file,
which is equivalent to the claimed "second encoding standard",
see Argument (I) above. The teachings of Ayars further disclose
of decrypting packets according to the DRM system (digital
rights file) used in the input file (first content file) , see column
11, lines 1-3 & 25-27 and col. 14, lines 5-6. Ayars further
discloses of the selection of the encryption object that
corresponds to the D RM system (digital rights file) of the output
file (second content file), see column 10, lines 50-54. Ayars
discloses of the use of keys that are created through the
encryption algorithm which are used to encrypt and decrypt the
encrypted content and the driver retrieves the appropriate objects
necessary to retrieval of the content, such as the
encryption/decryption of the (first/second) content files with
their appropriate DRM systems (first/second digital rights file),
see column 7, lines 9-38.
In response to applicant's argument that the references fail
to show certain features of applicant's invention, it is noted that
the features upon which applicant relies (i.e., encryption of the
content by use of the second encryption key) are not recited in
the rejected claim 1. Although the claim is interpreted in light of
the specification, limitations from the specification are not read
into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d
1057 (Fed. Cir. 1993). The Appellant's claims fail to include any
requirement of encryption of the content to be transcoded by use
of the first and/or second encryption keys, they merely mention
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that the first and second encryption keys are included within the
first and second rights data files, but not being used in the actual
encryption of the content.
(Ans. 4--5). The Examiner's responses to Appellants' argument, concerning
the second rights data file including a second content ID, and a second
encryption key, and indicates second content rights, doe not address the
specific claim language regarding a second rights data file including the two
items of data 1) a second content ID, 2) a second encryption key, and which
also indicates second content rights.
Appellants further argue that the Examiner changed his position to
"the teachings of Ayars disclose of an input file, which is interpreted as the
'data file encoded in a first encoding standard'." (Reply Br. 1 (quoting Ans.
3)). Appellants maintain that the Examiner's reasoning is also incorrect, and
claim 1 requires the rights data file is not encoded in a first encoded standard
- instead the encrypted content is encrypted in the first encoded standard as
recited in the preamble. (Reply Br. l ). Appellants further contend that the
Examiner relies upon a new citation in the Ayars reference, but "[t]he
Examiner still does not reasonably indicate what corresponds to Appellant's
claimed creation of the second rights data file." (Reply Br. 2). We agree
with Appellants.
From our review of the Examiner's responses, the Examiner generally
finds that the Ayars reference discloses the use of an identifier for a file and
the use of encryption and decryption keys. (Ans. 3-7). We agree with the
Examiner that these items of data are generally disclosed in the Ayars
reference, but the Examiner does not specifically identify the generation of a
second rights data file including both. Nor has the Examiner presented a
line of reasoning why it would have been obvious to one of ordinary skill in
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the art at the time of the invention to have stored the two items of
information in a second rights data file. Consequently, we agree with
Appellants that the Examiner has not provided the requisite factual findings
or line of reasoning to support the ultimate conclusion of obviousness of
claims 1 and 13. Additionally, the Examiner has not shown how the
additional references remedy the noted deficiency for the dependent claims.
As a result, we cannot sustain the obviousness rejection of independent
claims 1 and 13 and their respective dependent claims 2-12 and 21.
Additionally, with respect to independent claims 14 and 18, the
Examiner has not identified how the additional references to Hug and
Moroney references remedy the noted deficiency, and the Examiner relies on
column 7 of the Ayars reference to teach the second rights data file. (Ans.
13).
The Ayars reference discloses:
As mentioned above, the use of libraries comprised of classes
allows the driver 230 to create software objects when it
determines that the system 200 needs the objects, and then to
create the specific objects needed. Thus, the driver 230 can
include a file format object 250, a file writer object 255, a
decompression object 260, a compression object 265, a
decryption object 270, an encryption object 275, and a DRM
system rules object 280. In one embodiment, the driver 230
creates these objects during execution as it determines that they
are needed. In another embodiment, the driver 230 does not
instantiate every illustrated object.
(Ayars, col. 7, 11. 29-39). We find the portion of the Ayars reference relied
upon by the Examiner, does not teach or suggest the second rights data file
containing the two recited data items. The Examiner has not identified how
the additional references remedy the noted deficiency. Consequently, the
Examiner has not set forth sufficient factual findings to support the
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conclusion of obviousness of independent claims 14 and 18 and their
respective dependent claims 15-17, 19, 20, 23, and 24.
CONCLUSIONS
The Examiner erred in rejecting claims 1-24 based upon obviousness.
DECISION
For the above reasons, we reverse the Examiner's obviousness
rejections of claims 1-24.
REVERSED
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