Ex Parte Lee

Patent Trial and Appeal Board

Jun 14, 2016

12347212 (P.T.A.B. Jun. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/347,212 12/31/2008
31292 7590 06/16/2016
CHRISTOPHER & WEISBERG, PA
200 EAST LAS OLAS BOULEVARD
SUITE 2040
FORT LAUDERDALE, FL 33301
FIRST NAMED INVENTOR
Michael LEE
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.
22493-298PUS
(19170ROUS02
1700
EXAMINER
WINTER, JOHN M
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
06/16/2016 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):
ptomail@cwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL LEE
Appeal2014-000163
Application 12/347,212 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI,
and BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1 and 3-16. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Rockstar Consortium
US LP. (Appeal Br. 1.)
Appeal2014-000163
Application 12/347,212
CLAIMED SUBJECT MATTER
Appellant's claimed "invention relates generally to privacy and
encryption of media traffic over data networks." (Spec. i-f 2.)
Claims 1 and 12 are the independent claims on appeal. Claim 1 is
illustrative and is reproduced below:
1. A method of securing a media stream between first and
second endpoints of a packet data network, while still allowing
lawful intercept, comprising:
a) endpoints, each endpoint comprising a multimedia
apparatus having at least one processor, negotiating a media
session key for encrypting said media stream;
b) endpoints encrypting said media stream with said
media session key to produce an encrypted media stream; and
c) at least one of said endpoints creating and
transmitting an encrypted format key message which contains
the media session key encrypted with a first additional key for
which the corresponding decryption key is known by a lawful
intercept (LI) agency and further encrypted with at least a second
additional key, the second additional key associated with a
corresponding decP;ption key not knov,rn by said LI agency.
REJECTIONS
Claims 1 and 3-16 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter.
Claims 3-11 are rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the subject
matter regarded as the invention.
Claims 12-16 are rejected under 35 U.S.C. § 102(b) as anticipated by
Rodgers (US 2002/0026478 Al, pub. Feb. 28, 2002).
Claims 1and12 are rejected under 35 U.S.C. § 102(b) as anticipated
by Gunter (US 7,055,027 Bl, iss. May 30, 2006).
2
Appeal2014-000163
Application 12/347,212
Claims 3, 4, 8-10, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gunter and Harrison (US 2002/0054334 Al, pub. May 9,
2002).
Claims 5-7 and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gunter, Harrison, and Pankajakshan (US 7,191,332 Bl,
iss. Mar. 13, 2007).
ANALYSIS
The § 101 Rejection
Claim 1 is rejected under§ 101 because "Applicant's method claim is
non-statutory for failing the machine-or-transformation test." (Final
Action 6.) However, "precedents establish that the machine-or-
transformation test is a useful and important clue, an investigative tool, for
determining whether some claimed inventions are processes under § 101.
The machine-or-transformation test is not the sole test for deciding whether
an invention is a patent-eligible 'process."' Bilski v. Kappas, 561 U.S. 593,
604 (2010); see also DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014).
Claim 12, an apparatus claim with language similar to that of claim 1,
is rejected under§ 101 because the claim "is directed 'modules' and
'processor' performing various features" and these terms "includes software
only embodiments" which do "not belong to any of the four statutory
classes." (Final Action 7-8.) However, claims whose focus is directed to
"software only embodiments" are not inherently unpatentable. See Enfzsh,
3
Appeal2014-000163
Application 12/347,212
LLC v. Microsoft Corp., No. 2015-1244, 2016 WL 2756255, at *4 (Fed. Cir.
May 12, 2016).
The rejection analyses presented by the Examiner do not include
sufficient rationale to present a prima facie case of ineligible subject matter
under a proper § 101 analysis. See Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347 (2014). We understand that the Answer was filed before the Alice
decision. But, even at that, we do not find a sufficient analysis by the
Examiner to determine why, e.g., the claims are directed to an abstract idea.
Therefore, we reverse the rejection of independent claims 1 and 12 under
§ 101. For the same reasons, we reverse the rejection of dependent claims
3-11 and 13-16 under § 101. (See Final Action 8.)
The § 112. second paragraph, Rejections
states:
In making the § 112, second paragraph, rejections, the Examiner
25. Regarding Claims 3-11, Applicant amended to cancel
Claim 2. However, Claim 3-11 all depend from Claim 2. There
is insufficient antecedent basis for these claims as recited.
26. Regarding Claim 5, Applicant recites "said encrypted
format key message" in the limitations. The previous recitation
of an encrypted format key message is unclear. There is
insufficient antecedent basis for this limitation in the claim.
27. Regarding Claim 7, Applicant recites "after every n media
stream packets" in the limitations. The use of "N" as
representation of a variable is commonly understood by one of
ordinary skill in the art to imply values from zero to infinity. This
variable includes boundaries that cannot be reasonable [sic]
4
Appeal2014-000163
Application 12/347,212
determined. The metes and bounds of the claim scope are
unclear.
(Id. at 8-9.)
After the Final Action was mailed, Appellant sought to amend claim 3
to depend from claim 1 instead of claim 2, and to amend claim 7 to
additionally recite "where N is a finite integer." (Amendment After Final
Rejection under 37 C.F.R. §1.116, Nov. 20, 2012.)
The Examiner entered the amendments and stated that "[t]he
amendment overcomes the rejection of claims 3-11 under 35 U.S.C. 112 2nd
paragraph since claims 3-11 no longer depend upon canceled claim 2."
(Advisory Action (Continuation Sheet), mailed August 2, 2013.) Thus, the
rejection specified in paragraph 25 of the Final Action is withdrawn. (See
Answer 14.) However, the rejections specified in paragraphs 26 and 27 of
the Final Action are not withdrawn.
Therefore, Appellant's assertion that "the re} ections of Claims 3-11
under 35 U.S.C. § 112, second paragraph have been withdrawn" is not
correct. (See Reply Br. 7, emphasis added.) Indeed, the Examiner states in
the Answer that:
Appellant submit [sic] that the rejections under 35 U.S.C.
§ 112 have been overcome.
The Examiner responds that the amendment After Final
Rejection filed on 11/20/2012 has been entered and the rejection
of Claims 3-11 under 35 U.S.C. § 112 second paragraph is
hereby withdrawn.
(Answer 14, emphasis added.) Therefore, we address the rejections of
claims 5 and 7 under § 112, second paragraph.
With regard to the rejection of claim 5 for insufficient antecedent
basis for the term "said encrypted format key message," we note that the
5
Appeal2014-000163
Application 12/347,212
term appears in claim 1, from which claim 5 depends. We also note that the
Examiner does not reject claim 1 under§ 112, second paragraph. Therefore,
the Examiner provides no indication that the term in claim 1 is not
sufficiently clear. Appellant argues that claim 5 was not amended "because
there is sufficient antecedent basis for the term 'said encrypted format key
message."' (Appeal Br. 8, citing claim 1.)
The Examiner has not sufficiently explained why "[t]he previous
recitation of an encrypted format key message [in claim 1] is unclear in
claim 5." (See Final Action 9.) Nor has the Examiner sufficiently explained
why "[t]here is insufficient antecedent basis for this limitation in the claim."
(Id.) Therefore, we reverse the rejection of claim 5 under§ 112, second
paragraph.
With regard to the rejection of claim 7, Appellant amended Claim 7 to
recite that "N is a finite integer." Appellant argues "that the rejections under
35 U.S.C. § 112 have been overcome." (Appeal Br. 8.) The Examiner does
not indicate why this amendment does not provide a reasonable boundary on
the variable. (See Answer 14.) Therefore, we reverse the rejection of
claim 7 under§ 112, second paragraph.
The§ 102(b) Rejections
Claims 12-16
Claims 12-16 are rejected as anticipated by Rodgers. Claim 12
recites:
12. A data network multimedia apparatus for transmitting
encrypted media while still allowing for lawful intercept (LI)
compnsmg:
6
Appeal2014-000163
Application 12/347,212
a. a call signaling module, compnsmg a processor
configured to establish a call with another endpoint;
b. a key negotiation module, comprising a processor
configured to encrypt a media session key negotiated with said
another endpoint;
c. an encryption module, comprising a processor
configured to encrypt media traffic with said negotiated media
session key;
d. a LI module, comprising a processor configured to
create and transmit an encrypted message which contains the
media session key encrypted with a first additional key for which
the corresponding decryption key is known by a lawful intercept
(LI) agency and further encrypted with a privacy key, the privacy
key associated with a corresponding decryption key not known
by said LI agency.
The Examiner finds that "Rodgers discloses an apparatus comprising
a processor (Rodgers, i-1169--170)." (Final Action 9.) The Examiner also
states that "Applicant is reminded while features of an apparatus may be
recited either structurally or functionally, claims directed to an apparatus
must be distinguished from the prior art in terms of strt1cture rather than
function alone." (Id. at 9--10.)
Appellant argues "that the Office Action improperly ignores the
recitation of a call signaling module, a key negotiation module, an
encryption module, and a lawful intercept module. When these elements are
properly accorded patentable weight as discussed above, the rejection of
Claim 12 is unsupported." (Appeal Br. 8.)
Programming a processor to perform a task effectively "creates a new
machine, because a general purpose computer in effect becomes a special
purpose computer once it is programmed to perform particular functions
pursuant to instructions from program software." In re Alappat, 33 F.3d
1526, 1545 (Fed. Cir. 1994). Thus, the Examiner does not present a prima
7
Appeal2014-000163
Application 12/347,212
facie case of anticipation with respect to Rodgers because the Examiner does
not adequately explain where, e.g., Rodgers discloses "a processor
configured to establish a call with another endpoint."
Claims 1 and 12
The Examiner also rejects claims 1 and 12 as anticipated by Gunter.
The Examiner finds that Gunter discloses
at least one of said endpoints creating and transm1ttmg an
encrypted message which contains the media session key
encrypted with a first additional key for which the corresponding
decryption key is known by a lawful intercept (LI) agency (see
Gunter, col. 6 line 60 - col. 7 line 7) and further encrypted with
at least a second additional key, the second additional key
associated with a corresponding decryption key not known by
said LI agency (see Gunter, col. 7 lines 7-40).
(Final Action 10.)
Appellant argues that the Examiner does not provide "any analysis" in
making this finding. (Appeal Br. 10.) Appellant argues that
(Id.)
if it is assumed that Gunter's firewall plays the role of the lawful
intercept agency, then clearly Gunter cannot disclose that the
media session key is further encrypted with a privacy key
associated with a decryption key not known by the lawful
intercept agency (firewall). This is so because Gunter clearly
shows that the encrypted session key is encrypted by two keys,
both of which are associated with decryption keys known to the
firewall.
The Examiner does not directly respond to Appellant's argument but
instead "submits that the claimed 'lawful intercept agency' is outside the
scope of the claimed 'endpoint to endpoint' communication and therefore
8
Appeal2014-000163
Application 12/347,212
cannot be claimed as a component of the disclosed system." (Answer 16.)
Additionally, the Examiner
states that the type of data being collected by the system (e.g.
"contains a media session key encrypted with a first additional
key for which the corresponding decryption key is known by a
lawful intercept (LI) agency and further encrypted with a privacy
key, the privacy key associated with a corresponding decryption
key not known by said LI agency,") is non-functional as it does
not alter how the invention functions.
(Answer 17.)
The question of who, specifically, knows the first additional key and
not the second additional key is not functionally related to the claimed
invention and "will not distinguish the invention from the prior art in terms
ofpatentability." See In re Gulacki, 703 F.2d 1381, 1385 (Fed. Cir. 1983).
However, the claimed invention relates to encryption and it is functionally
related to the claimed invention that a third party, e.g., "a lawful intercept
agency," knows the first additional key and does not know the second
additional key. Appellant has persuasively argued that the cited portions of
Gunter do not disclose this claim element. Therefore, we reverse the
rejection of claims 1 and 12 as anticipated by Gunter.
The § 103 Rejections
In rejecting claims 3, 4, 8-10, 14, and 15 under§ 103(a) as
unpatentable over Gunter and Harrison, the Examiner does not rely on
Harrison to cure any defects in Gunter. (See Final Action 11-13.)
9
Appeal2014-000163
Application 12/347,212
Therefore, for the reasons discussed above, we reverse the rejection of
claims 3, 4, 8-10, 14, and 15 under§ 103(a).
In rejecting claims 5-7 and 16 under§ 103(a) as unpatentable over
Gunter, Harrison, and Pankajakshan, the Examiner does not rely on Harrison
or Pankajakshan to cure any defects in Gunter. (See id. at 13-14.)
Therefore, for the reasons discussed above, we reverse the rejection of
claims 5-7 and 16 under§ 103(a).
DECISION
The Examiner's rejection of claims 1 and 3-16 under 35 U.S.C. § 101
is reversed.
The Examiner's rejections of claims 5 and 7 under 35 U.S.C. § 112,
second paragraph, are reversed.
The Examiner's rejections of claims 1and12-16 under§ 102(b) are
reversed.
The Examiner's rejections of claims 3-10 and 14--16 under§ 103(a)
are reversed.
REVERSED
10