Ex Parte Folea et al

Patent Trial and Appeal Board

Sep 25, 2018

12248437 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/248,437 10/09/2008
35811 7590 09/27/2018
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 4900
PHILADELPHIA, PA 19103
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Octavian Folea
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.
LMC-08-1360 9854
EXAMINER
NIGH, JAMES D
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
pto. phil@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OCT A VIAN FOLEA and DIDIER LE STEVEN
Appeal2017-006774
Application 12/248,437 1
Technology Center 3600
Before ERIC B. CHEN, KARA L. SZPONDOWSKI, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1--4, 9--18, 20, 21, 26-33, 36, and 37. Claims 5-8, 19,
22-25, 34, and 35 have been cancelled. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 Appellants' Brief ("App. Br.") identifies NAGRA FRANCE as the real
party in interest. App. Br. 1.
Appeal2017-006774
Application 12/248,437
CLAIMED SUBJECT MATTER
The claims are directed to a method and system for secure sharing of
recorded copies of a multicast audiovisual program using scrambling and
watermarking techniques. Spec., Title. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for secure distribution of an original audiovisual
stream to a plurality of consumer devices through a multicast
sess10n compnsmg:
generating, by a server, a protected audiovisual stream
from the original audiovisual stream by replacing at least one part
of original data in the original audiovisual stream with different
data;
generating, by the server, a complementary stream
comprising digital information suitable to allow reconstruction
of an audiovisual stream from the protected audiovisual stream,
the complementary stream containing the at least one part of the
original data replaced by the different data in the protected
audiovisual stream;
transmitting, by the server, the protected audiovisual
stream and the complementary stream to a receiving consumer
device;
calculating, by one or more mark generators, a first mark
and a second mark, the first mark calculated as a function of a
unique identifier of the receiving consumer device or an external
secure device, the second mark calculated as a function of a
unique identifier of a second device, the external secure device
or a consumer using the second device, the one or more mark
generators being only connected to at least one of the receiving
consumer device and the second device;
reconstructing, on the receiving consumer device, a first
marked audiovisual stream from the protected audiovisual
stream as a function of the first mark and the complementary
stream;
transmitting, by the receiving consumer device, the
protected audiovisual stream to the second device, without
marking the protected audiovisual stream with the first mark;
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receiving, by the second device, the complementary
stream from the receiving consumer device or an external device
such that the complementary stream received at the second
device does not include the first mark;
reconstructing, on the second device, a second marked
audiovisual stream from the protected audiovisual stream
received from the receiving consumer device as a function of the
second mark and the received complementary stream, such that
the second marked audiovisual stream does not include the first
mark.
App. Br. 11 (Claims Appendix).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Schumann
Lecomte
Estevez
Rijckaert
Stone
US 6,285,774 Bl
US 2006/0164544 Al
US 2008/0085031 Al
US 2008/0304810 Al
US 7,962,964 B2
Sept. 4, 2001
July 27, 2006
Apr. 10, 2008
Dec. 11, 2008
June 14, 2011
ETR 289, "Digital Video Broadcasting (DVB); Support for use of
scrambling and Conditional Access (CA) within digital broadcasting
system," European Telecommunications Standards Institute (ETSI),
October 1996, 13 pages.
REJECTIONS
Claims 1--4, 9--18, 20, 21, 26-33, 36, and 37 stand rejected under
35 U.S.C. § 112, first paragraph as failing to comply with the written
description requirement. Final Act. 4.
Claims 1, 2, 4, 9, 11, 12, 14, 17, 18, 20-25, 27, 30, 31, 33, 36, and 37
stand rejected under 35 U.S.C. § I03(a) as being unpatentable over
Schumann and Lecomte. Final Act. 7.
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Application 12/248,437
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schumann, Lecomte, and ETR 289. Final Act. 13.
Claims 10, 15, 26, 28, and 32 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Schumann, Lecomte, and Rijckaert. Final
Act. 14.
Claims 13, 16, and 29 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Schumann, Lecomte, and Stone. Final Act. 15.
ISSUES
First Issue: Has the Examiner erred in determining the "without
marking" limitation of claims 1 and 20 lacks support in the Specification?
Second Issue: Has the Examiner erred in determining the limitation
"the one or more mark generators being only connected to at least one of the
receiving consumer device and the second device" lacks support in the
Specification?
Third Issue: Has the Examiner erred in finding Schumann and
Lecomte teach, suggest, or otherwise render obvious the limitation that
"does not include the first mark," as recited in claim 1?
ANALYSIS
First Issue
Claim 1 recites the limitation "transmitting, by the receiving consumer
device, the protected audiovisual stream to the second device, without
marking the protected audiovisual stream with the first mark." App. Br. 11
(Claims Appendix) (italics added). In rejecting independent claims 1 and 20
under§ 112, first paragraph, the Examiner finds the paragraphs identified by
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Application 12/248,437
Appellants as providing support for the "without marking" limitation are
insufficient because "the disclosure does not actually state in paragraphs
0040 and 0054 that the streams being transmitted from the receiving device
to the second device are without the marks of the receiving device." Final
Act. 4--5. The Examiner adds that the transmission without marking the
protected "without marking" "is being inferred from the description of the
streams as they relate to the initial transmission from the distribution server
(0019, 0024--0026) and the fact that the numbering of each stream is
identical as shown in Figures IA and IB." Final Act. 5. The Examiner
further finds the documents incorporated by reference into Appellants'
Specification, do not provide the necessary support. Id.
Appellants argue the "without marking" limitation finds support in the
Specification at paragraphs 40, 54, 61, and 63 as well as in Figures IA, IB,
2A-2C. More specifically, Appellants argue Figures IA-IB and 2A-2C
depict a protected audiovisual stream 121 that is transmitted to a first device
(12) where it bypasses the mark generator (5) in being further transmitted to
descrambling component (21) in the second device (13). App. Br. 5.
Appellants further argue the Specification makes clear that when the
protected stream ( 121) is modified, such as by marking, the reference
number associated with the protected stream is also modified to indicate the
change. Appellants cite operation of the descrambling module (21) as
illustrative of this change, with the reference number of protected stream
( 121) changing to first marked content ( 124) after the protected stream ( 121)
has been marked by the descrambling module (21) with the first mark ( 511 ).
App. Br. 6 (citing Fig. IA). Appellants further argue the description in the
Specification regarding the operation of the second device (13) lends further
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Application 12/248,437
support because paragraph 42 states that "[o]n the second device 13, the
protected content 121 and the complementary stream 122 are then processed
by the descrambling module 21 to generate the second marked content 127
in function of a second mark 512." App. Br. 6 (quoting Spec. ,r 42). Thus,
according to Appellants, the Specification is consistent in that when the
protected stream remains unchanged, the reference number ( 121) depicting
the stream in Figs. lA-lB and 2A-2C remains the same; conversely, when
the protected stream is modified by marking, the reference number for the
marked, protected stream consistently changes to a different reference
number.
We are persuaded by Appellants' arguments. We provide below an
annotated view of Appellants' Figure 1, which illustrates an embodiment of
the data flow between the server (11), first device (12), and second device
(13).
,:• •n• --·.-n .s---••••h• .-n .,_ "'"" "". "-. , ... •••• .s •, • ._,._, .0•• .,., "'
~ :
~-:,.-..,·.~~.-..: .... '-~
APPELLANTS' FIGURE 1 A DEPICTS AN EMBODIMENT OF A MULTI CAST
SYSTEM
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As shown, the protected stream (121) is transmitted to first device
(12) where it is received by network interface (41). The network interface
( 41) transmits the protected audiovisual stream ( 121) and the complimentary
stream (122) to descrambling module (21 ), but the protected stream (121) is
also diverted to second device (13) before it reaches descrambling module
(21 ). Based on this illustration and its associated description, we agree with
Appellants that a person of ordinary skill in the art would have understood
the inventor possessed the protected stream ( 121) being sent from first
device (12) to second device (13) without first being marked. Accordingly,
we do not sustain the Examiner's rejection for lack of written description of
the "without marking" limitation.
Second Issue
Claim 1 also recites the limitation "the one or more mark generators
being only connected to at least one of the receiving consumer device and
the second device." App. Br. 11 (Claims Appendix). The Examiner finds
the Specification lacks support for this limitation because "[t]he claim now
encompasses an embodiment where a single mark generator is connected to
both the receiving consumer device and the second device where the
disclosure provides no actual teaching of such an embodiment." Final
Act. 6.
Appellants argue the Examiner has erred because an embodiment in
which a single mark generator is connected to both the receiving device and
second device is shown in Figure 2B, and "[i]in both Figs. 2A and 2B, the
mark generator connects to at least one of the devices 12, 13, i.e., located on
the device side." App. Br. 7. We agree with Appellants.
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The embodiments depicted in Figs. 2A and 2B illustrate
configurations in which the mark generator ( 5) is connected to one device
(12) (see Fig. 2A) and more than one device (see Fig. 2B), but not connected
to another other device. Accordingly, we agree with Appellants, that
"[ w ]hichever of the systems disclosed in the specification or shown in the
figures of the application as-filed, the mark generator( s) is (are) never
located on the server side or connected to this server." App. Br. 7. As such,
we are persuaded the Examiner has erred in finding this limitation lacking of
support, and we do not sustain the rejection for lack of written description of
the limitation "the one or more mark generators being only connected to at
least one of the receiving consumer device and the second device."
Third Issue
The Examiner rejects the independent claims as being obvious over
Schumann and Lecomte. Final Act. 7. Relevant here, the Examiner finds
that neither of the references explicitly teach the "without marking"
limitation discussed supra in connection with the rejections made under
§ 112, first paragraph. Nevertheless, the Examiner finds this limitation
would have been obvious in view of Schumann because:
As a first matter the language "that does not include the first
mark" is directed towards a negative limitation. While per MPEP
§ 2173.0S(i) indicates that such a limitation is not indefinite and
is acceptable as long as support exists within the original
disclosure, it should also be pointed out that the limitation simply
removes an undesired feature of Schumann (marking content at
a receiving device with a mark unique to that device prior to
forwarding the content to a second device) without achieving
results that would be viewed as unpredictable or retaining the
original function which per MPEP § 2144.04 II A is a factor that
leads to a determination of obviousness.
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Final Act. 9--10.
Appellants dispute the Examiner's findings and conclusion.
Appellants argue:
The language "that does not include the first mark" does not
simply remove an undesired feature of Schumann. Rather, the
claimed methods and systems when viewed "as a whole" are
markedly different from those disclosed in Schumann. This is
because, as shown in example Figs. 2A and 2B, the Appellant
provides two possibilities (i.e. two paths) for the stream within
the receiving device (before the marking generator), whereas
Schumann teaches only one possibility (i.e. a single path) for this
stream within the receiving device. This means that the same
stream, as received from the server, is processed within the
receiving device in two different ways, depending on whether it
is intended to be displayed on the screen of this receiving device,
or whether it has to be transmitted to the second device. Thus,
without the first mark 511, the stream which is received by the
first device 12 can be directed toward the marking device of this
first device, but it can also avoid this marking device before
being sent to the second device 13. Accordingly, the claimed
methods and systems do not simply remove an undesired feature,
but rather provide an added feature since there are two
possibilities (i.e., two paths).
App. Br. 8. Appellants also argue a person of ordinary skill in the art would
not modify Schumann as proposed by the Examiner:
The features of "transmitting ... the protected audiovisual
stream ... without marking the protected audiovisual stream with
the first mark" and "receiving ... the complementary stream ...
such that the complementary stream ... does not include the first
mark" do not simply omit an element having a function that is
"not desired." In sharp contrast, the function of the mark is the
central feature of Schumann's invention. That is, Schumann
affirmatively teaches to include a mark "[t]o enable the source of
an unauthorized copy of an information-bearing medium, such
as a video DVD, to be traced [by altering] a compressed digital
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signal stream ... to include 'running marks,' that comprise pixel
blocks changing in position frame by frame and encoded with
information designating where and when the copy was made."
See Abstract of Schumann. Because the inclusion of the "running
marks" is necessary to fulfill the objective of tracing the source
of unauthorized copies, this is not a case where the marks
perform a nonessential function that can be omitted if desired.
App. Br. 9.
We are persuaded by Appellants' arguments. In particular, we agree
with Appellants that marking the protected content is central to the purpose
of Schumann, and a person of ordinary skill in the art would not have sought
to remove this functionality. As explained by Schumann, the "invention
relates generally to copy protection ... and more particularly to data
modification to help enable an unauthorized copyist to be identified."
Schumann col. 1, 11. 7-12. Schumann teaches the use of "running marks" to
determine the source of unauthorized copying. The Examiner finds
modifying Schumann to achieve Appellants' invention merely "removes an
undesired feature of Schumann," but the Examiner does not provide any
reason, nor is one apparent to us, for why an ordinarily skilled artisan would
view Schumann's "running marks" as an "undesired feature" in light of their
importance in the Schumann's copyist identification method. Accordingly,
we are persuaded the Examiner has erred in finding Schumann and Lecomte
render claim 1 obvious, and we do not sustain its rejection nor that of
independent claim 20, which recites a substantially similar limitation. The
remaining claims each depend from one of the independent claims, and we
do not sustain their rejection for the same reasons.
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DECISION
We reverse the Examiner's rejection of claims 1--4, 9--18, 20, 21, 26-
33, 36, and 37 under 35 U.S.C. § 103(a).
We reverse the Examiner's rejection of claims 1--4, 9--18, 20, 21, 26-
33, 36, and 37 under 35 U.S.C. § 112, first paragraph.
REVERSED
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