Telefonaktiebolaget L M Ericsson (PUBL)

Patent Trials and Appeals Board

Jul 31, 2020

2019002875 (P.T.A.B. Jul. 31, 2020)

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.
14/618,598 02/10/2015 Raj Nair P43772-US2 6856
28240 7590 07/31/2020
THE DANAMRAJ LAW GROUP, P.C.
TURLEY LAW CENTER, SUITE 810
6440 N. CENTRAL EXPRESSWAY
DALLAS, TX 75206
EXAMINER
TOLENTINO, RODERICK
ART UNIT PAPER NUMBER
2439
NOTIFICATION DATE DELIVERY MODE
07/31/2020 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):
betty@danamraj.com
dlg-admin@danamraj.com
shreen@danamraj.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RAJ NAIR, KEVIN J. MA, and MIKHAIL MIKHAILOV
_____________

Appeal 2019-002875
Application 14/618,598
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, MARC S. HOFF, and
JOHN D. HAMANN, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1–20. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b).
We Affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a) (2018). According to Appellant, the real party in interest
is Ericsson AB. See Appeal Br. 1.
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STATEMENT OF THE CASE 2
Introduction
Appellant’s claimed invention “relates to digital rights management in
a network environment,” including “a user device and method used on the
user device to securely provide the content keys that are used to encrypt
streaming content.” Spec. ¶ 1.

Representative Claim 1
1. A method operating at a user device for securing streaming
content decryption, the method comprising:

receiving at the user device a manifest for requested content, the
manifest providing a Content Encryption Key (CEK) that is encrypted
using a first public Key Encryption Key (KEK), a corresponding first
private KEK being stored in secure storage on the user device;

decrypting, inside a secure processing zone on the user device, the
CEK using the first private KEK to create a decrypted content key;

decrypting, inside the secure processing zone, requested content
using the decrypted content key to form decrypted content; and

providing the decrypted content to a decoder on the mobile user
device.

Claims Appendix, Appeal Br. 28 (emphasis added regarding the “receiving”
step disputed under anticipation Rejection B).

2 We herein refer to the Non-Final Office Action, mailed Apr. 16, 2018
(“Non-Final Act.”); Appeal Brief, filed Sept. 17, 2018 (“Appeal Br.”); the
Examiner’s Answer, mailed Dec. 28, 2018 (“Ans.”); and the Reply Brief,
filed Feb. 28, 2019 (“Reply Br.”).

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Evidence
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Matsuyama et al.
(“Matsuyama”)
US 2002/0027992 Al Mar. 7, 2002
Devadas et al.
(“Devadas”)
US 2006/0210082 Al Sept. 21, 2006
Pedlow, JR.
(“Pedlow”)
US 2006/0274898 Al Dec. 7, 2006
Kozuka et al.
(“Kozuka”)
US 2013/0145481 Al June 6, 2013
Futa et al.
(“Futa”)
US 2014/0013453 Al Jan. 9, 2014
Jannard et al.
(“Jannard”)
US 2014/0196079 Al July 10, 2014
Van Brandenburg et al.
(“Van Brandenburg”)
US 2016/0198202 Al July 7, 2016

Rejections
Rej. Claims
Rejected
35 U.S.C. § Reference(s)/Basis
A 1–20 101 Eligibility
B 1, 2, 12, 20 102(a)(2) Jannard
C 3, 4, 7, 10,
11, 13, 14
103 Jannard, Futa
D 5 103 Jannard, Futa, Pedlow
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E 6 103 Jannard, Futa, Kozuka
F 8, 15, 17–19 103 Jannard, Futa, Matsuyama
G 9 103 Jannard, Futa, Van Brandenburg
H 16 103 Jannard, Futa, Matsuyama, Devadas

Claim Grouping
Based on Appellant’s arguments (Appeal Br. 6–11) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of Rejection A
under 35 U.S.C. § 101 of claims 1–20 on the basis of representative claim 1.
To the extent Appellant has not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
37 C.F.R. § 41.37(c)(1)(iv).
Prior Decision
PTAB Appeal 2017-007400, Application No. 14/618,598, decided
January 31, 2018 (Examiner reversed).

Analysis
In reaching this Decision, we consider all evidence presented and all
arguments actually made by Appellant.

Rejection A under 35 U.S.C. § 101 of Claims 1–20
USPTO 35 U.S.C. § 101 Guidance
On January 7, 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of 35 U.S.C. § 101 in the
Federal Register, Vol. 84, No. 4 (“January 2019 Memorandum”). This
January 2019 Memorandum was updated by the October 2019 Revised
Patent Subject Matter Eligibility Guidance (“October 2019 Memorandum”),
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which was made available on the USPTO website.3 Under the January 2019
Memorandum, we first look to whether the claim recites:
(1) (see January 2019 Memorandum, Fed. Reg. at 54, Step 2A
— Prong One) any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts,
certain methods of organizing human activity such as a
fundamental economic practice, or mental processes); and

(2) (see January 2019 Memorandum, Fed. Reg. at 54–55, Step
2A — Prong Two) additional elements that integrate the
judicial exception into a practical application (see MPEP
§ 2106.05(a)–(c), (e)–(h)).4

Only if a claim: (1) recites a judicial exception; and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception.

3 The Office issued a further memorandum on October 17, 2019 (the
October 2019 Memorandum) clarifying guidance of the January 2019
Memorandum in response to received public comments. See https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf.
Moreover, “[a]ll USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” January 2019
Memorandum, Fed. Reg. at 51.
4 This evaluation is performed by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See January 2019 Memorandum, 84 Fed. Reg. at 53–
54 Section III (A)(2).
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See January 2019 Memorandum, Fed. Reg. at 56, Step 2B.
Because there is no single definition of an “abstract idea” under Alice
step 1, the January 2019 Memorandum, Fed. Reg., synthesizes, for purposes
of clarity, predictability, and consistency, key concepts identified by the
courts as abstract ideas to explain that the “abstract idea” exception includes
the following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;

2. Mental processes—concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and

3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See January 2019 Memorandum, 84 Fed. Reg. at 52.
According to the January 2019 Memorandum, 84 Fed. Reg. at 53,
“[c]laims that do not recite [subject] matter that falls within these
enumerated groupings of abstract ideas should not be treated as reciting
abstract ideas,” except in rare circumstances. Even if the claims recite any
one of these three groupings of abstract ideas, these claims are still not
“directed to” a judicial exception (abstract idea), and thus are patent eligible,
if “the claim as a whole integrates the recited judicial exception into a
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practical application of that exception.” See January 2019 Memorandum, 84
Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article
to a different state or thing — see MPEP § 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment,
such that the claim as a whole is more than a drafting effort
designed to monopolize the exception — see MPEP §
2106.05(e).

In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
See January 2019 Memorandum, 84 Fed. Reg. at 54–55, Prong Two.
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January 2019 Memorandum, Step 2A, Prong One
the Judicial Exception
In reviewing the prosecution history, we note Appellant did not have
the benefit of the Director’s January 2019 Memorandum until the Reply
Brief was filed on Feb. 28, 2019. Therefore, we consider Appellant’s
arguments that pertain to the January 2019 Memorandum as timely in the
Reply Brief.
Under the 2019 Memorandum, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts;
(b) mental steps; and (c) certain methods of organizing human activities.
The Examiner concludes the claims recite an abstract idea, because:
the claim describes an abstract idea of processing and
distributing content. The concept described in said claims is
similar to the concepts found by the courts to be abstract ideas of
encoding and decoding image data (See RecogniCorp. (Fed Cir.
2017) and processing and distributing content Affinity Labs of
Texas LLC v. Amazon.com Inc. (Fed. Cir. 2016) for details).
Non-Final Act. 3.

Independent Claim 1
In Table One below, we identify in italics the specific claim
limitations that we conclude recite an abstract idea. We also identify in bold
the additional (non-abstract) claim elements that we find are generic
computer components:

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TABLE ONE

Independent Claim 1 2019 Memorandum
[a] A method operating at a user
device for securing streaming
content decryption, the method
comprising: 5

[b] receiving at the user device a
manifest for requested content, the
manifest providing a Content
Encryption Key (CEK) that is
encrypted using a first public Key
Encryption Key (KEK), a
corresponding first private KEK
being stored in secure storage on
the user device;

Receiving a manifest for requested
content is insignificant extra-solution
activity (i.e., data gathering). See
January 2019 Memorandum, 84 Fed.
Reg. at 55 n.31; see also MPEP
§ 2106.05(g).

[c] decrypting, inside a secure
processing zone on the user device,
the CEK using the first private KEK
to create a decrypted content key;

Abstract Idea: decrypting the CEK
using the first private KEK to create
a decrypted content key is a
mathematical operation that can be
performed alternatively by a person
as a mental process. See January
2019 Memorandum, 84 Fed. Reg. at
52.

[d] decrypting, inside the secure
processing zone, requested content
Abstract Idea: decrypting requested
content using the decrypted content

5 A method falls under the statutory subject matter class of a process. See
35 U.S.C. § 101 (“Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.”).

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Independent Claim 1 2019 Memorandum
using the decrypted content key to
form decrypted content; and

key to form decrypted content is a
mathematical operation that can be
performed alternatively by a person
as a mental process. See January
2019 Memorandum, 84 Fed. Reg. at
52.
[e] providing the decrypted content
to a decoder on the mobile user
device.
providing the decrypted content to a
decoder on the mobile user device is
insignificant post-solution activity.
See January 2019 Memorandum, 84
Fed. Reg. at 55 n.31; see also MPEP
§ 2106.05(g).

Abstract Idea

Appellant contends:
Appellant asserts that “receiving at the user device a
manifest for requested content,” “decrypting ... a content
encryption key,” “decrypting ... requested content using the
decrypted content encryption key,” and “providing the decrypted
content to a decoder on the mobile user device” cannot be
properly analogized as mathematical concepts, methods of
organizing human activity, or mental processes, as required
under Prong 1 of Step 2A Analysis of the Guidance. These
elements of Claim 1 are not key concepts that have been
identified by the courts as abstract.
Reply Br. 3.
We disagree with Appellant. As identified above in Table One, the
decrypting step “c” of claim 1 recites an abstract idea. We conclude
“decrypting . . . the CEK using the first private KEK to create a decrypted
content key” is a mathematical operation that can be performed alternatively
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by a person as a mental process. See January 2019 Memorandum, 84 Fed.
Reg. at 52.
Similarly, we conclude the additional step “d” of “decrypting” recites
a mathematical operation that can be performed alternatively by a person as
a mental process. Id.
We note that merely combining several abstract ideas does not render
the combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855
F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to
another abstract idea . . . does not render the claim non-abstract.”); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).
Because independent claim 1 recites an abstract idea, as identified in
Table One, supra, and because remaining independent claims 12 and 20
each recite similar language of commensurate scope, we conclude all claims
1–20 recite an abstract idea, as identified above, under Step 2A, Prong One.
Therefore, we proceed to Step 2A, Prong Two.

January 2019 Memorandum, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application

Additional Limitations
Pursuant to the 2019 Memorandum, we consider whether there are
additional elements set forth in the claims that integrate the judicial
exception into a practical application. See January 2019 Memorandum, 84
Fed. Reg. at 54–55.
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The Examiner finds: “the claims do not include additional elements
that are sufficient to amount to significantly more than the judicial exception
because the additional elements when considered both individually and as an
ordered combination do not amount to significantly more than the abstract
idea.” Ans. 5.
We have identified steps “b” and “e” in claim 1 as insignificant
“extra” and post-solution activity, respectively. See supra Table One. See
January 2019 Memorandum, 84 Fed. Reg. at 55 n.31; see also MPEP
§ 2106.05(g).
The Supreme Court guides that the “prohibition against patenting
abstract ideas ‘cannot be circumvented by’ . . . adding ‘insignificant
postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010)
(quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
We additionally find the “user device” and “mobile user device”6
recited in independent claim 1, the “user device” and the “processor” recited
in independent claim 12, and the “client device” and “user device” recited in
independent claim 20 are additional limitations that are generic computer
components.

6 We note there is no antecedent basis in claim 1 for “the mobile user
device” even though “a user device” is recited in the preamble. (emphasis
added). We leave this issue to the consideration of the Examiner in the
event of further prosecution of this application. Although the Board is
authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should
be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02 [R-11.2013].

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MPEP § 2106.05(a)
Appellant contends that “[c]laim 1 integrates the concepts that the
Examiner has alleged are directed to a judicial exception into a practical
application that involves sending encrypted content encryption keys to a user
device over a non-secure connection in a specific manner.” Reply Br. 4.
Appellant additionally contends: “In an alternate practical application, the
claimed method can add additional security even when a secure connection
is available and used.” Id.
However, in reviewing the Appeal Brief and Reply Brief, we find
Appellant does not advance any specific, substantive arguments explaining
how the claimed generic computer components aid the method, the extent to
which the computer aids the method, or the significance of a computer to the
performance of the method to improve the recited processor(s), memory
device(s), user device(s), mobile user device(s), network(s), or server(s).
See Claims 1–20. See MPEP § 2106.05(a).
We note the “‘mere automation of manual processes using generic
computers’ . . . ‘does not constitute a patentable improvement in computer
technology,’” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384
(Fed. Cir. 2019) (quoting Credit Acceptance Corp. v. Westlake Servs., 859
F.3d 1044, 1055 (Fed. Cir. 2017)). Because Appellant’s claim limitations
use generic computer components as a tool to perform generic computer
functions, we conclude these limitations do not integrate the abstract idea
into a practical application. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
223–24 (2014).
Accordingly, on this record, we conclude independent claim 1, and
independent claims 12 and 20, which recite similar limitations of
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commensurate scope, do not recite an improvement to the functionality of a
computer or other technology or technical field. See MPEP § 2106.05(a).

MPEP § 2106.05(c), 2106.05(e)
Appellant advances no arguments that any of the method claims on
appeal are tied to a particular machine, or transform an article to a different
state or thing. See MPEP § 2106.05(c).

MPEP § 2106.05(e) Meaningful Claim Limitations
Appellant does not argue that claim 1 (or any other claim) recites
certain “meaningful” claim limitations, such as those of the types addressed
under MPEP § 2106.05(e), that impose meaningful limits on the judicial
exception.7 Appellant does not present substantive arguments explaining
how the judicial exceptions are applied or used in some meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment.

MPEP § 2106.05(f)
Merely including instructions
to implement an abstract idea on a computer, or
Merely using a computer as a tool to perform an abstract idea

7 See January 2019 Memorandum, 84 Fed. Reg. at 55, citing MPEP
§ 2106.05(e): “[A]ppl[ying] or us[ing] the judicial exception in some other
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception.”
(emphasis added).
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We conclude Appellant’s claimed invention merely implements the
abstract idea using generic computer components. As discussed above,
we find the “user device” and “mobile user device” recited in independent
claim 1, the “user device” and the “processor” recited in independent claim
12, and the “client device” and “user device” recited in independent claim 20
are additional limitations that are generic computer components. Therefore,
we conclude Appellant’s claims merely use a generic programmed computer
as a tool to perform an abstract idea.

MPEP § 2106.05(g)
Adding insignificant extra-solution activity to the judicial exception

As discussed above, we conclude that independent claim 1 recites
extra or post-solution activities that courts have determined to be insufficient
to transform judicially excepted subject matter into a patent-eligible
application. See MPEP § 2106.05(g); see also January 2019 Memorandum,
84 Fed. Reg. at 55 n.31.
For example, we have identified steps “b” and “e” in claim 1 as
reciting insignificant “extra” and post-solution activity, respectively, as
shown in Table One above. See also buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the
information over a network—with no further specification—is not even
arguably inventive.”). That is, these limitations use a generic computer
component that performs a generic computer function as a tool to perform an
abstract idea. Thus, these limitations do not integrate the abstract idea into a
practical application. See Alice, 573 U.S. at 223–24. Instead, these
limitations perform insignificant extra-solution activities. Cf. Apple, Inc. v.
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Ameranth, Inc., 842 F.3d 1229, 1242 (Fed. Cir. 2016) (agreeing with the
Board that printing and downloading generated menus are insignificant post-
solution activities). See also Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1341 (Fed. Cir. 2017) (streaming
audio/visual data over a communications system like the Internet held patent
ineligible.).
MPEP § 2106.05(h)
Generally linking the use of the judicial exception to a particular
technological environment or field of use

The Supreme Court guides: “the prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or [by] adding
‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–11 (quoting
Diehr, 450 U.S. at 191–92).
Appellant argues that the claims do not involve preemption.
Even if one were to argue that the claims are directed to an
alleged abstract idea, an assertion that Applicant does not
concede, the pending claims do not seek up to tie up any such
judicial exception due to the specific particular useful
applications described above. It should be appreciated that
without such application, the distribution of encrypted programs
and associated encryption keys for decrypting those programs
would be markedly less secure.
Appeal Br. 8 (emphasis added).
To the extent that Appellant advances arguments regarding a lack of
preemption in the Appeal Brief (Appeal Br. 8), our reviewing court provides
applicable guidance: “While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
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1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat the claims do not preempt all
price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract”).
Nor do claims 1–20 on appeal present any other issues as set forth in
the 2019 Memorandum regarding a determination of whether the additional
generic computer elements integrate the judicial exception into a practical
application. See January 2019 Memorandum, 84 Fed. Reg. at 55.
Thus, under Step 2A, Prong Two (MPEP § 2106.05(a)–(c) and (e)–
(h)), we conclude claims 1–20 do not integrate the judicial exception into a
practical application. Therefore, we proceed to Step 2B, The Inventive
Concept.
The Inventive Concept — Step 2B
Under the 2019 Memorandum, only if a claim: (1) recites a judicial
exception; and (2) does not integrate that exception into a practical
application, do we then look to whether the claim adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field; or simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. See MPEP § 2106.05(d).

Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
Berkheimer was decided by the Federal Circuit on February 8, 2018.
On April 19, 2018, the PTO issued the Memorandum titled: “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
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Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memorandum”).8 The Berkheimer Memorandum provided
specific requirements for an Examiner to support with evidence any finding
that claim elements (or a combination of elements) are well-understood,
routine, or conventional.
The Examiner, under Step 2B, finds several additional elements
recited in the claims were well-understood, routine, and conventional at the
time of Appellant’s invention. In particular, the Examiner finds:
Generic computer components [are] recited as performing
generic computer functions that are well understood, routine
and conventional activities [that] amount to no more than
implementing the abstract idea with a computerized system.
Non-Final Act. 3 (emphasis added).
As Berkheimer evidence, the Examiner cites to several case
authorities in support:
The combination of steps/elements is no more than the sum of
their parts, and provides nothing more than mere decoding of
encoded content using generic computing/network devices.
Therefore, the claims do not provide significantly more. See
RecogniCorp. (Fed. Cir. 2017), for details; see also [Intellectual]
Ventures LLC v. Symantec Corp. (Fed. Cir. 2016) and Affinity
Labs of Texas LLC v. Amazon.com Inc. (Fed. Cir. 2016).
Non-Final Act. 4 (emphasis added).
In the Appeal Brief, Appellant contends the “Examiner has not cited
an express statement in the specification or a statement made by the
applicant during prosecution that demonstrates the allegedly well-

8 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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understood, routine, conventional nature of the additional element(s).”
Appeal Br. 10.
But the Examiner has provided (Non-Final Act. 4) Berkheimer
evidence of type two, i.e., “[a] citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine,
conventional nature of the additional element(s).” Berkheimer
Memorandum 4.
However, Appellant does not further address Step 2B (Inventive
Concept) or Berkheimer in the Reply Brief (2–4). Nor does the Reply Brief
further traverse the Examiner’s specific Berkheimer findings regarding the
court decisions cited on page 4 of the Non-Final Action. Arguments not
made are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Therefore, based upon our review of the record, we find the Appellant
has not persuasively or substantively addressed the Examiner’s specific
findings under Step 2B, regarding the generic computer components and
functions as found by the Examiner on pages 3–4 of the Non-Final Action.
See Reply Br. 2–4.
Accordingly, on the record before us, Appellant has not shown that
the claims on appeal add a specific limitation beyond the judicial exception
that is not well-understood, routine, and conventional, when the claim
limitations are considered both individually and as an ordered combination.
See MPEP § 2106.05(d).
In light of the foregoing, and under the 2019 Memorandum, we
conclude that each of Appellant’s claims 1–20, considered as a whole, is
directed to a patent-ineligible abstract idea that is not integrated into a
practical application, and does not include an inventive concept. Therefore,
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we sustain the Examiner’s Rejection A under 35 U.S.C. § 101 of claims
1–20.

Rejection B under § 102 of Claims 1, 2, 12, and 20
Issue under § 102
Issue: Under 35 U.S.C. § 102(a)(2), we focus our analysis on the
argued “receiving” step and the claimed “manifest” that we find is
dispositive regarding anticipation Rejection B of independent claims 1, 12,
and 20.

Did the Examiner err by finding Jannard expressly or inherently
discloses the disputed, dispositive step:
receiving at the user device a manifest for requested
content, the manifest providing a Content Encryption Key
(CEK) that is encrypted using a first public Key Encryption
Key (KEK), a corresponding first private KEK being stored in
secure storage on the user device[,]

within the meaning of representative independent claim 1? (emphasis
added). 9
We note independent claim 20 recites an identical step or act of
receiving. Independent “user device” claim 12 recites similar language of
commensurate scope.

9 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
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The Examiner’s Finding of Anticipation
The Examiner relies upon Jannard’s description, at paragraphs 37, 60,
and 124, and Figure 4, as anticipating the claim 1 step of “receiving”
including the disputed “manifest.” See Non-Final Act. 6; Ans. 7. The
Examiner reads the claimed “manifest” on at least one of Jannard’s
“encryption envelopes” described at paragraph 60. The Examiner finds
Jannard’s paragraph 60 describes generating:
[an] encryption envelope [manifest] for each intended recipient
player; [the] first content key K1 [CEK] can be encrypted using
a global public key; par. 0060; each player has corresponding
private keys and a global private key [KEK] to allow full
unwrapping or decryption of the content keys).
Non-Final Act. 6 (emphasis added in bold; emphasis in italics omitted).
Appellant disputes the Examiner’s findings. Appellant focuses on the
claim term “manifest” and urges that “nothing in [Jannard’s] paragraph
[0037] discloses, teaches, or even suggest[s] anything that can be fairly
analogized with the claimed ‘manifest,’ much less a manifest ‘providing a
Content Encryption Key (CEK) that is encrypted using a first public Key
Encryption Key (KEK).’” Appeal Br. 13 (quoting pertinent part of claim 1)
(emphasis added).
Appellant also traverses the Examiner’s findings regarding paragraph
60 of Jannard:
At most, paragraph [0060] describes a first content key being
encrypted by a global public key (creating a first encryption
envelope) and further encrypted by an intended recipient's public
key (creating a second encryption envelope). The same can be
done with a second content key. A distributor can then unwrap
the second encryption envelope and encrypt another exterior
encryption envelope for each intended recipient player. The
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intended recipient player can unwrap both envelopes with
corresponding private keys and a global private key to decrypt
content assets.
Appeal Br. 13 (emphasis added).

Further regarding Jannard, Appellant contends:

nothing in paragraph [0060] discloses, teaches, or even suggest
anything that can be fairly analogized with the claimed
“manifest,” much less a manifest “providing a Content
Encryption Key (CEK) that is encrypted using a first public Key
Encryption Key (KEK)" or that “a corresponding first private
KEK being stored in secure storage on the user device,” as
claimed.
Appeal Br. 13–14 (emphasis omitted).
Appellant also traverses Jannard’s paragraph 124. See Appeal Br. 14.

Claim Construction
Claim 1 defines the disputed term “manifest” in terms of its intended
purpose, and in terms of what it provides: “a manifest for requested content,
the manifest providing a Content Encryption Key (CEK) that is encrypted
using a first public Key Encryption Key (KEK).” (emphasis added).
We turn to the Specification for further context regarding the claim
term “manifest,” and find no explicit limiting definition. Although the
Specification discloses that the “[u]se of manifest files for streaming
delivery of segmented content is generally known” (Spec. ¶ 5), we find the
best description of the claimed “manifest” is found in paragraph 30 of the
Specification, with reference to Appellant’s Figure 2A:

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FIG. 2A depicts a method 200A for a securing a content
encryption key provided in a manifest file. The method begins
with receiving (205) a manifest for requested content; the
manifest providing an encrypted CEK [(“Content Encryption
Key”)] that has been used to encrypt the streaming media for
transmission. As shown in system 100’ of FIG. 1B, content
control server 102 sends the CEK to security client 106 over
connection 131A. In at least one embodiment, content control
server 102 provides the encrypted CEK to security client 106 via
a third party (not specifically shown) that inserts the encrypted
CEK into the manifest and provides the manifest to the CDN
[(“Content Delivery Network”)] for delivery to user device 101.
. . . In addition to providing the CEK, the manifest can provide
multiple bitrates for viewing the requested media stream and the
means to request content at each available bitrate.
Spec. ¶ 30 (emphasis added).

Turning to the evidence, we note paragraph 59 of Jannard begins the
description of Jannard’s Figure 4, and is reproduced here in pertinent part:
FIG. 4 illustrates a block diagram of multiple layers
of encryption configured to limit access to an asset encryption
key. Content keys K1, K2 can be encrypted one or more times
and are not generally fully unwrapped or decrypted until they
are delivered to the target playback device. Because only
authorized devices contain the global player private key SK-RR,
a content distributor does not generally decrypt the content
keys Kl, K2.
Jannard ¶ 59 (emphasis added).
Jannard’s paragraph 60 (re: Fig. 4), as relied upon by the Examiner
(Non-Final Act. 6; Ans. 7), describes at least one encryption envelope that
the Examiner reads on the claimed manifest:
A first content key Kl 415 can be encrypted using a
global public key PK-RR, creating a first encryption envelope
410. This first envelope 410 can be further encrypted using an
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intended recipient’s public key, which in this case can be
PK-D1, corresponding to distributor 1 450. This generates a
second envelope 405. Similarly, a second content key K2 430
can be encrypted in two envelopes 420, 425 using the same
public keys. . . . This can allow players to decrypt corresponding
assets encrypted with the symmetric content keys Kl, K2.
Jannard ¶ 60 (emphasis added).
Although “[a]n anticipatory reference . . . need not duplicate word for
word what is in the claims.” Standard Havens Prods., Inc. v. Gencor Indus.,
Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991), we note that Jannard uses the
literal term “manifest” elsewhere (in paragraphs 88–90), which the
Examiner has not relied upon, nor distinguished from, the claimed
“manifest.”
Even though Jannard’s paragraph 60 describes that “[a] first content
key Kl 415 can be encrypted using a global public key PK-RR, creating a
first encryption envelope 410” (emphasis added), we note that Jannard’s
paragraph 60 describes using not just one, but at least two encryption
envelopes (410,405), and paragraph 59 describes “multiple layers of
encryption configured to limit access to an asset encryption key.” (emphasis
added).
Thus, at the device (player 1) level, as depicted in Jannard’s Figure 4
(460a), we understand the player 1 device uses private keys and a global
private key to “decrypt [the] corresponding assets encrypted with the
symmetric content keys K1, K2.” Jannard ¶ 60.

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Is Jannard an Anticipating Reference?
Although we find Jannard is a close reference, the dispositive question
before us is whether Jannard is an anticipating reference given that it uses
multiple layers of encryption, including two encryption envelopes (410,
405), and two encrypted keys (K1, K2) (Jannard ¶ 59–60).
On this record, we find some degree of speculation would be required
to affirm the Examiner’s anticipation Rejection B of independent claims 1,
12, and 20 over Jannard, regarding the claimed “manifest.” 10 We decline
to engage in speculation. Claim 1 (emphasis added).
Therefore, based upon our review, we find the Examiner has not fully
developed the record to show that a “manifest” as claimed is expressly or
inherently anticipated by Jannard’s “encryption envelope 410” as described
in paragraph 60, and as depicted in Figure 4A, and also mentioned in
paragraph 124.
We need not decide the issue of whether the Jannard’s “encryption
envelope 410” (¶ 60) might suggest the claimed “manifest,” because the
Examiner sets forth an anticipation rejection for each independent claim 1,
12, and 20, instead of an obviousness rejection.
To the extent the Examiner may determine that an obviousness
rejection may be applicable to the independent claims in the event of further
prosecution, we note that Appellant admits: “this invention deals with the

10 In anticipation, “the Board must compare the construed claim to a prior art
reference and make factual findings that ‘each and every limitation is found
either expressly or inherently in [that] single prior art reference.”’ In re
Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004).

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field of ‘streaming content.’ It is well-known in the art of ‘streaming
content’ that ‘manifest files’ are used to indicate to a user device from
which to retrieve the streaming content.” Appeal Br. 14 (emphasis added).11
Even considering that Appellant’s Specification also describes that the
“[u]se of manifest files for streaming delivery of segmented content is
generally known” (Spec. ¶ 5 (emphasis added)), we are constrained on this
record to reverse the Examiner’s anticipation Rejection B, because we can
only consider on appeal the description and drawings found within the four
corners of Jannard as evidence.
We note that evidence of what was well known in the art at the time
of the invention may be relied upon by the Examiner to establish a prima
facie case of obviousness under 35 U.S.C. § 103. However, such evidence
has no relevance with respect to showing anticipation under 35 U.S.C. § 102
over Jannard in this appeal.
In the event of further prosecution, we bring to the Examiner’s
attention a discussion of the use of a literal “manifest” in paragraphs 88–90
of Jannard, as discussed above. Because the Examiner has not relied upon
paragraphs 88–90 as evidence, nor distinguished the “manifest” described in
Jannard (id.) from the claimed “manifest,” we decline to do so here in the
first instance. We note the Board “is basically a board of review — we
review . . . rejections made by patent examiners.” Ex parte Gambogi, 62
USPQ2d 1209, 1211 (BPAI 2001).

11 Although the Board is authorized to reject claims under 37 C.F.R.
§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02.
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Therefore, based upon a preponderance of the evidence, we are
constrained on this record to reverse the Examiner’s anticipation Rejection B
of independent claim 1 over Jannard. As noted above, independent claim 20
recites an identical step or act of “receiving.” Independent “user device”
claim 12 recites similar language of commensurate scope.
Accordingly, for the same reasons discussed above regarding claim 1,
we also reverse the Examiner’s anticipation Rejection B of independent
claims 12 and 20. Because we have reversed the anticipation Examiner’s
Rejection B of each independent claim on appeal, for the same reasons we
reverse the Examiner’s anticipation Rejection B of dependent claim 2.

Remaining § 103 Rejections C–H of all Remaining Dependent Claims
In light of our reversal of Rejection B of independent claims 1, 12,
and 20, supra, we also reverse obviousness Rejections C–H of all remaining
dependent claims which variously and ultimately depend therefrom. On this
record, the Examiner has not shown how the additionally cited secondary
references overcome the aforementioned deficiencies of Jannard, as
discussed above regarding claim 1.

CONCLUSIONS
Under the Director’s 2019 Memorandum, as governed by relevant
case law, we conclude that claims 1–20, as rejected under 35 U.S.C. § 101,
are directed to patent-ineligible subject matter.
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The Examiner erred in rejecting claims 1, 2, 12, and 20, as being
anticipated under 35 U.S.C. § 102(a)(2), over Jannard.
The Examiner erred in rejecting claims 3–11 and 13–19, as being
obvious under 35 U.S.C. § 103, over the cited combinations of references.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).

DECISION SUMMARY

Rej. Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
A 1–20 101 Eligibility 1–20
B 1, 2, 12,
20
102(a)(2) Jannard 1, 2, 12,
20
C 3, 4, 7, 10,
11, 13, 14
103 Jannard, Futa 3, 4, 7, 10,
11, 13, 14
D 5 103 Jannard, Futa,
Pedlow
5
E 6 103 Jannard, Futa,
Kozuka
6
F 8, 15,
17–19
103 Jannard, Futa,
Matsuyama
8, 15,
17–19
G 9 103 Jannard, Futa,
Van Brandenburg
9
H 16 103 Jannard, Futa,
Matsuyama,
Devadas
16
Overall
Outcome
1–20

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FINALITY AND RESPONSE
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). See
37 C.F.R. § 41.50(f).
AFFIRMED