Ex Parte Fahrny et al

Board of Patent Appeals and Interferences

Mar 28, 2012

10914478 (B.P.A.I. Mar. 28, 2012)

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.
10/914,478 08/09/2004 James William Fahrny 007412.00072 5180
71867 7590 03/29/2012
BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
LE, CANH
ART UNIT PAPER NUMBER
2439
MAIL DATE DELIVERY MODE
03/29/2012 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 JAMES WILLIAM FAHRNY and CHARLES L. COMPTON
____________

Appeal 2009-015018
Application 10/914,478
Technology Center 2400
____________

Before JOSEPH F. RUGGIERO, CARLA M. KRIVAK and
CARL W. WHITEHEAD, JR., Administrative Patent Judges.

WHITEHEAD, JR., Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-015018
Application 10/914,478

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-10. Addendum to Appeal Brief 1.1 We have jurisdiction under 35
U.S.C. § 6(b) (2002).
We affirm.
Introduction
The invention is directed to a controller for managing media stream
description keys. Specification 1-2.
Initially, claims 1-10 and 23-31 were pending in the application.
Claims 11-22 were canceled. Appeal Brief 4.
Upon filing an Appeal Brief (October 17, 2008), Appellants only
appealed claims 1 and 3. See Appeal Brief 4. Appellants appealed claims 1
and 3 rejected under 35 U.S.C. § 112, second paragraph; and claim 3
rejected under 35 U.S.C. § 103(a). Id. at 8.
The Examiner, in the Answer (mailed January 2, 2009), responded to
Appellants’ Appeal Brief by initially maintaining the 35 U.S.C § 112,
second paragraph rejection of claims 1-10 and 23-31 and the 35 U.S.C. §
103(a) rejection of claims 1-10 and 23-31. Answer 4-19. However,
Examiner later indicated that “t]he rejection with respect to claims 1 and 3
under 35 U.S.C. 112 [sic] §, 2nd has been withdrawn.” Id. at 19.

1 The Addendum to Appeal Brief filed August 6, 2009, is submitted in
response to the Interview Summary and Notice of Non-Compliant Appeal
Brief mailed July 27, 2009, indicating that Section III: Status of Claims does
not properly identify claims 2, 4-10, and 23-31 as being appealed or
cancelled.
Appeal 2009-015018
Application 10/914,478

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Appellants filed a Reply Brief (February 18, 2009) in response to the
Examiner’s Answer. Appellants contend that “t]he E]xaminer has
withdrawn the rejection under 35 U.S.C. § 112, 2nd paragraph. Therefore,
the only remaining rejection at issue is the rejection of claim 3 under 35
U.S.C. § 103 (a).” Reply Brief 1.
The Examiner responded with a second or subsequent Answer
(mailed February 25, 2009) (2nd Answer) to Appellants’ Brief filed
(October 17, 2008). The Examiner repeated the 35 U.S.C § 112, 2nd
paragraph rejection of claims 1-10 and 23-31 and 35 U.S.C. § 103 (a)
rejection of claims 1-10 and 23-31. 2nd Answer 4-19. However, the
Examiner later indicated again that “t]he rejection with respect to claims 1
and 3 under 35 U.S.C. 112 [sic] §, 2nd has been withdrawn.” Id. at 19.
The Examiner, in an Office Communications mailed March 16, 2009,
indicated the Reply Brief has been considered and the application has been
forwarded to the Board of Patent Appeals and Interferences (BPAI) for
decision on the appeal.
Upon receipt of the application, the BPAI remanded the application to
the Examiner; ordering the Examiner to enter a paper canceling claims 2,
4-10, and 23-21 because Appellants did not appeal all rejected claims. See
Order Returning Undocketed Appeal to Examiner (mailed June 29, 2009;
citing Ex parte Ghuman,
http://www.uspto/web/offices/dcom/bpai/prec/rm081175.pdf (B.P.A.I. May
14, 2008) (precedential)).
The Examiner held an interview with Appellants’ representative on
July 22, 2009. See Examiner Interview Summary Record (mailed July 27,
Appeal 2009-015018
Application 10/914,478

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2009). The Examiner stated that “t]he Examiner called Ross, Dannenberg
[sic] about the defective appeal brief. Mr. Ross want [sic] me to send him
the defective appeal brief rather cancelling claims 2 and 4-10.” Id.
Appellants filed an Addendum to Appeal Brief (August 6, 2009)
stating, on page 1 that:
[C]laims 1-10 are appealed. A revised Claims Appendix is also
attached. The Office is authorized to cancel claims 23-31. No
revisions to the arguments/remarks section of the Appeal Brief is
believed necessary because claims 2 and 4-10 are all dependent on an
appealed claim having arguments already presented therein.

The Addendum to Appeal Brief was considered and entered by the
Examiner in an Office Communications mailed September 11, 2009, and the
application was forwarded to the BPAI for a decision on appeal.
Exemplary Claim
Although Appellants appeal claims 1-10, only arguments pertaining to
claim 3 are of record. Addendum to Appeal Brief 1; Appeal Brief 12-15.
Therefore, claim 3 is the exemplary claim.
Claim 3 is reproduced below:
3. The controller of claim 1 wherein the content key
list and the table are loaded into the controller from the
headend.

Rejections on Appeal
Claims 2 and 4-10 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Applicants regard as the invention.
2nd Answer 4.
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Application 10/914,478

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Claims 1, 3, and 5 stand rejected under 35 U.S.C. §103 (a) as being
unpatentable over Pinder (U.S. Patent Application Publication Number
2003/002577 A1; published January 2, 2003) and Morino (U.S. Patent
Application Publication Number 2002/0101990 A1; published August 1,
2002). 2nd Answer 5-8.
Claim 2 stands rejected under 35 U.S.C. §103 (a) as being
unpatentable over Pinder, Morino, and Van Rijnsoever (U.S. Patent
Application Publication Number 2002/0090090 A1; published July 11,
2002). 2nd Answer 12-13.
Claims 4 and 6 stand rejected under 35 U.S.C. §103 (a) as being
unpatentable over Pinder, Morino, and Gilhousen (U.S. Patent Number
4,792,973; issued December 20, 1988). 2nd Answer 13-15.
Claim 7 stands rejected under 35 U.S.C. §103 (a) as being
unpatentable over Pinder, Morino, and Hutchings (U.S. Patent Number
6,898,285 B1; issued May 24, 2005). 2nd Answer 15-16.
Claim 8 stands rejected under 35 U.S.C. §103 (a) as being
unpatentable over Pinder, Morino, and Wasilewski (U.S. Patent Number
6,157,719; issued December 5, 2000). 2nd Answer 16-17.
Claim 9 stands rejected under 35 U.S.C. §103 (a) as being
unpatentable over Pinder, Morino, and Husemann (U.S. Patent Application
Publication Number 2005/0100161 A1; published May 12, 2005). 2nd
Answer 17-18.
Claim 10 stands rejected under 35 U.S.C. §103 (a) as being
unpatentable over Pinder, Morino, and Ishiguro (U.S. Patent Application
Publication Number 2005/0119967 A1; published June 2, 2005). 2nd
Answer 18-19.
Appeal 2009-015018
Application 10/914,478

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ANALYSIS
Indefiniteness
The Examiner withdrew the rejection of claims 1 and 3 under 35
U.S.C. § 112, second paragraph, thus, leaving claims 2 and 4-10 still
rejected under 35 U.S.C. § 112, second paragraph. 2nd Answer 19.
However, the Examiner states that: “Claims 2-10 are rejected due to virtual
dependency of claim 1.” Id. at 5. Therefore, the rejections of claims 2 and
4-10 are not sustained because the rejection of claim 1 has been withdrawn.
Obviousness
Appellants’ arguments do not address the merits of the various
rejections of claims 1, 2, 4-7, 9, and 10. Appeal Brief 12-15. Therefore, we
affirm pro forma, below, the rejection of claims 1, 2, 4-7, 9, and 10 over the
various obviousness rejections, because Appellants presented no arguments
directed to the claims.
We address the merits of the rejection of claims 3 and 8 together since
claim 8 is dependent upon claim 3.
The Examiner finds:
The combination of teaching between Pinter and Morino teach
the claimed subject matter.
Morino further teaches the controller of claim 1 wherein the
content key list and the table are loaded into the controller from the
headend [fig. 13, box 67; par. [0049], “In fig. 13, reference numeral
69 represents a contents key and used when enciphered contents
are deciphered, reference numeral 68 represents a key index
corresponding to the contents key 69, reference numeral 67
represents a key storage area for storing a plurality of pairs of
contents keys 69 and key indices 68”; contents key keys 69; par.
[0050], identification ID 20 corresponding to the key index 68
which is in reference numeral 67 (i.e. table) in figure fig. 13].
Appeal 2009-015018
Application 10/914,478

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2nd Answer 8.
Appellants contend the Examiner never identifies where the
referernces teach or suggest that the table (containing indices) is also loaded
into the controller from the headend as claimed. Reply Brief 2. We do not
find Appellants’ arguments persuasive because the Examiner relied upon the
Pinter reference in combination with Morino to disclose “wherein the
content key list and the table are loaded into the controller from the
headend.” 2nd Answer 8. Further, the Examiner finds:
Morino teaches a data receiving apparatus has a tuner for
receiving enciphered contents and an enciphered scramble key (i.e.
content key) [Morino: abstract, fig. 13, tuner 11]. Thus, the content
key is a content key list. Morino further teaches using the acquired
contents key and identification ID, the contents data is enciphered,
and the key index enciphered/decipher unit 40 enciphered, the key
index by a specific key [Morino: par. [0050], lines 22-25]. Morino
further teaches storing key index in a table [Morino: fig. 13, label 67]
which has the key index 68 and content keys 69 [Morino: fig. 13,
label 68 & label 69].
2nd Answer 20-21. Therefore, the Examiner identifies and discloses where
Morino teaches or suggests wherein the table could be loaded into the
controller from the headend. We sustain the Examiner’s rejection of claim
3, as well as, the Examiner’s rejection of claim 8 which depends upon claim
3.

DECISION
The rejection of claims 1-10 under 35 U.S.C. § 103 is sustained.
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).
Appeal 2009-015018
Application 10/914,478

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AFFIRMED

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