Ex Parte Pensak et al

Board of Patent Appeals and Interferences

Jun 19, 2012

11129746 (B.P.A.I. Jun. 19, 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.
11/129,746 05/16/2005 David A. Pensak 11953.0002-R2 9497
30678 7590 06/19/2012
CONNOLLY BOVE LODGE & HUTZ LLP
1875 EYE STREET, N.W.
SUITE 1100
WASHINGTON, DC 20006
EXAMINER
LIPMAN, JACOB
ART UNIT PAPER NUMBER
2434
MAIL DATE DELIVERY MODE
06/19/2012 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 DAVID A. PENSAK, JOHN J. CHRISTY, and
STEVEN J. SINGLES
____________
Appeal 2010-002457
Application 11/129,746
Technology Center 2400
____________

Before ERIC S. FRAHM, MICHAEL R. ZECHER, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

ZECHER, Administrative Patent Judge.

DECISION ON APPEAL
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I. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 11-18, 24, and 27. Claims 1-10 have been
cancelled. Responsive to a restriction requirement, claims 19-23 have been
withdrawn. Claims 25 and 26 have been indicated as containing allowable
subject matter. Amended App. Br. 2. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
Appellants’ Invention
Appellants invented a method for encrypting electronic information,
such as a document, so that only users with permission may access the
document in decrypted form. According to Appellants, the claimed
invention uses software components residing on a viewing user’s computer
to retrieve a decryption key and associated policies from a remote server,
decrypt information to the extent authorized by the policies, render the clear
text to the viewing user’s computer screen, and immediately delete the
decryption key from the viewing user’s computer. See Abstract.
Illustrative Claim
11. A method of controlling distribution of an
encrypted segment of electronic information, comprising:
receiving, at a user location from a remote server, a key
capable of decrypting the encrypted segment, and at least one
policy limitation associated with the segment;
generating, at the user location, a decrypted version of
the encrypted segment using at least a single-use copy;
limiting use of the decrypted version of the encrypted
segment at the user location consistent with the at least one
policy limitation; and
preventing the single-use copy of a key from being used
more than once to decrypt the encrypted segment, such that
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attempting to re-access the encrypted segment requires
obtaining a new copy of the key.

Prior Art Relied Upon
Bigham US 5,544,161 Aug. 6, 1996
Schneier US 5,978,475 Nov. 2, 1999
(filed July 18, 1997)

Rejections on Appeal
Claims 11-18 and 24-27 stand rejected under 35 U.S.C. § 251 based
on a defective reissue declaration. Ans. 3-4
Claims 11, 15, 18, and 24 stand provisionally rejected on the ground
of nonstatutory double patenting as being unpatentable over claims 1-11 of
Pat. Application No. 10/936,829. Ans. 5.
Claims 11, 15, and 18 stand rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 1-13 of U.S. Pat. No.
6,289,450. Ans. 5.
Claims 11, 15, and 18 stand rejected on the ground of nonstatutory
double patenting as being unpatentable over claims 1-30 of U.S. Pat. No.
6,339,825. Ans. 5-6.
Claims 11, 14, 15, and 18 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Bingham. Ans. 6.
Claim 24 stands rejected under 35 U.S.C. § 102(e) as being
anticipated by Schneier. Ans. 7.
Claims 12, 13, 16, 17, and 27 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Bigham. Ans. 7-8.

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Examiner’s Findings and Conclusions
The Examiner finds that since Bigham’s key is only useable for
decrypting one specific stream, it only has a single use. Ans. 9. Therefore,
the Examiner finds that Bigham’s key describes the “single-use key” recited
in independent claims 11, 15, and 18. Id. Further, the Examiner disagrees
with Appellants’ assertion that changing channels back and forth constitutes
re-access. Ans. 9. Instead, the Examiner finds that changing channels
would not stop the decryption, but rather just interrupt the decryption. Id.
The Examiner finds that the decryption would continue at a later point in the
stream, thereby continuing the original single use of the key. Ans. 9.
Appellants’ Contentions
Appellants contend that the “single-use key” recited in independent
claims 11, 15, and 18 is only capable of being used once. App. Br. 10. Put
another way, Appellants argue that if a key is capable of being used more
than once, it is not a single-use key. Id. With this claim construction in
mind, Appellants allege that the Examiner’s position with respect to the
claimed “single-use key” is improper for two reasons: 1) Bigham’s limit on
the period of time in which the key can be used places no corresponding
limitation on the number of times the key may be used, let alone limit the
use of the key to a single use; and 2) since a user in Bigham could terminate
access to the encrypted pay-per-view program by changing the channel, then
re-access the program by changing the channel back, the same key would be
used twice. App. Br. 11-12.
In response to the Answer, Appellants contend that while Bigham is
silent with regards to what happens when there is a break in the incoming
video stream, this silence or lack of clarity cannot be used to support the
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Examiner’s stated position because the rejection is for anticipation and
Bigham must show the features of the claimed “single-use key.” Reply Br.
3. Appellants argue that since the Examiner’s stated position would be
unclear one way or the other, Bigham cannot be relied upon to disclose the
claimed “single-use key.” Id.

II. ISSUE
The dispositive issue before us is whether the Examiner erred in
finding that Bigham describes “preventing the single-use copy of a key from
being used more than once to decrypt the encrypted segment, such that
attempting to re-access the encrypted segment requires obtaining a new copy
of the key[,]” as recited in independent claim 11, and similarly recited in
independent claims 15 and 18.

III. ANALYSIS
35 U.S.C. § 251 Rejection and Double Patenting Rejections
Since Appellants do not present any arguments with regards to: 1) the
Examiner’s rejection of claims 11-18 and 24-27 under 35 U.S.C. § 251 as
being based on a defective reissue declaration (Ans. 3-4); and (2) the
Examiner’s provisional nonstatutory double patenting rejection of claims 11,
15, 18, and 24 (Ans. 5); and 3) the Examiner’s nonstatutory double patenting
rejections of claims 11, 15, and 18 (Ans. 5-6), we summarily sustain these
rejections. See Manual of Patent Examining Procedure § 1205.02, 8th ed.,
Rev. 8, July 2010 (“If a ground of rejection stated by the examiner is not
addressed in the appellant’s brief, that ground of rejection will be summarily
sustained by the Board.”).
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35 U.S.C. § 102(b) Rejection—Bigham
Claims 11, 15, and 18
Based on the record before us, we find error in the Examiner’s
anticipation rejection of independent claim 11, which recites, inter alia,
“preventing the single-use copy of a key from being used more than once to
decrypt the encrypted segment, such that attempting to re-access the
encrypted segment requires obtaining a new copy of the key.” Independent
claims 15 and 18 recite a similar claim limitation.
At best, we find that Bigham discloses a network interface module
located in a digital entertainment terminal that deletes an encryption key at
the end of a specified time period. Col. 40, ll. 20-22. However, we find that
Bigham’s destruction of the encryption key after a specified time period
does not necessarily describe preventing the encryption key from being used
more than once, as claimed. That is, if a prospective user lost connection to
a selected pay per view event or changed channels, we find no disclosure in
Bigham to indicate that any attempt to re-access the selected pay per view
event requires obtaining a new copy of the encryption key.
Moreover, while the Examiner takes the position that Bigham
continues to decrypt the selected pay per view event using the original
single-use encryption key even after a prospective user lost the connection or
changed channels (see Ans. 9), we find no such disclosure in Bigham to
indicate that this course of action is even contemplated. Such conjecture
would require us to resort to speculation, unfounded assumptions, or
hindsight reconstruction. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967). We will not resort to such speculation or assumptions to cure the
deficiencies in the factual basis in order to support the Examiner’s
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anticipation rejection. As a result, we find that the Examiner has not
presented sufficient evidence to warrant that the textual portions of Bigham
relied upon necessarily describe the disputed claim limitation. It follows
that the Examiner erred in finding that Bigham anticipates independent
claims 11, 15, and 18.
Since Appellants have shown at least one error in the rejection of
independent claims 11, 15, and 18, we need not reach the merits of
Appellants’ other arguments. It follows that the Examiner has erred in
finding that Bigham anticipates independent claims 11, 15, and 18.
Claim 14
Since dependent claim 14 incorporates by reference the same disputed
claim limitation as independent claim 11, we find that the Examiner erred in
rejecting this claim for the same reason set forth in our discussion of
independent claim 11.
35 U.S.C. § 102(e) Rejection—Schneier
Claim 24
Appellants correctly note that independent claim 11 was not rejected
under 35 U.S.C. § 102(e) as being anticipated by Schneier, but rather was
only rejected under 35 U.S.C. § 102(b) as being anticipated by Bigham. See
App. Br. 16; Reply Br. 6. Therefore, since claim 24 depends from
independent claim 11, the Examiner at the very least should have
incorporated Bigham in the grounds of rejection applicable to dependent
claim 24.
Nonetheless, assuming arguendo that the Examiner intended to reject
dependent claim 24 under 35 U.S.C. § 102(b) as being anticipated by
Bigham, or under 35 U.S.C. § 103(a) as being unpatentable over the
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combination of Bigham and Schneier, dependent claim 24 still incorporates
by reference the “preventing” method step recited in independent claim 11.
As discussed supra, the Examiner improperly relied upon Bigham to
describe this disputed claim limitation. It follows that the Examiner has
erred in finding that Schneier anticipates dependent claim 24.
35 U.S.C. § 103(a) Rejection—Bigham
Claims 12, 13, 16, 17, and 27
Since independent claims 16 and 17, and dependent claims 12, 13, and
27, either recite a similar claim limitation as independent claim 11, or
incorporate by reference the same claim limitation as independent claim 11,
we find that the Examiner has erred in concluding that Bigham renders these
claims unpatentable for the same reason set forth in our discussion of
independent claim 11.

IV. CONCLUSIONS
1. The Examiner has not erred in rejecting claims 11-18 and 24-27
under 35 U.S.C. § 251 as being based on a defective reissue declaration.
2. The Examiner has not erred in provisionally rejecting claims
11, 15, 18, and 24 under the doctrine of nonstatutory double patenting.
3. The Examiner has not erred in rejecting claims 11, 15, and 18
under the doctrine of nonstatutory double patenting.
4. The Examiner has erred in rejecting claims 11, 14, 15, and 18
under 35 U.S.C. § 102(b) as being anticipated by Bigham.
5. The Examiner has erred in rejecting claim 24 under 35 U.S.C.
§ 102(e) as being anticipated by Schneier.
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6. The Examiner has erred in rejecting claims 12, 13, 16, 17, and
27 under 35 U.S.C. § 103(a) as being unpatentable over Bigham.

V. DECISION
1. We affirm the Examiner’s decision to reject claims 11-18 and
24-27 under 35 U.S.C. § 251 as being based on a defective reissue
declaration.
2. We affirm the Examiner’s decision to provisionally reject
claims 11, 15, 18, and 24 under the doctrine of nonstatutory double
patenting.
3. We affirm the Examiner’s decision to reject claims 11, 15, and
18 under the doctrine of nonstatutory double patenting.
4. We reverse the Examiner’s decision to reject claims 11, 14, 15,
and 18 under 35 U.S.C. § 102(b) as being anticipated by Bigham.
5. We reverse the Examiner’s decision to reject claim 24 under 35
U.S.C. § 102(e) as being anticipated by Schneier.
6. We reverse the Examiner’s decision to reject claims 12, 13, 16,
17, and 27 under 35 U.S.C. § 103(a) as being unpatentable over Bigham.
Since 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).
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).

AFFIRMED

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