Ex Parte Wasilewski et al

Board of Patent Appeals and Interferences

Jul 31, 2012

10602987 (B.P.A.I. Jul. 31, 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.
10/602,987 06/25/2003 Anthony J. Wasilewski 60374.0029USC4/CPOL968448 6302
62658 7590 07/31/2012
MERCHANT & GOULD
SCIENTIFIC ATLANTA, A CISCO COMPANY
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
CHAI, LONGBIT
ART UNIT PAPER NUMBER
2431
MAIL DATE DELIVERY MODE
07/31/2012 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 ANTHONY J. WASILEWSKI and HOWARD G. PINDER
____________

Appeal 2010-005506
Application 10/602,987
Technology Center 2400
____________

Before MARC S. HOFF, JAMES R. HUGHES, and
GREGORY J. GONSALVES, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-005506
Application 10/602,987

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-19 (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The Invention
Exemplary Claim 1 follows:
1. A method for providing a plurality of programs in a conditional
access system, the method comprising the steps of:

using a packet identifier to select for encryption a portion of each of a
plurality of digital bit streams from a transport stream;

encrypting a portion of each of the plurality of digital bit streams;

combining the encrypted portion and the unencypted portion with the
transport stream; and

transmitting the combined stream.

The Examiner rejected claims 1-19 under 35 U.S.C. § 102(e) as being
anticipated by Candelore (U.S. 7,376,233 B2, May 20, 2008, filed Oct. 18,
2002) (Ans. 3-6).
ISSUE
Appellants’ responses to the Examiner’s positions present the
following issue:
Did the Examiner err in ruling that Appellants are not entitled to claim
priority to the parent continuation application (Application No. 09/930,901
filed on 16 August 2001, “the ‘901 continuation application”) because the
’901 continuation application fails to provide adequate support for “using a
packet identifier to select for encryption a portion of each of a plurality of
Appeal 2010-005506
Application 10/602,987

3
digital bit streams from a transport stream” and “combining the encrypted
portion and unencrypted portion with the transport stream,” as recited in
independent claim 1 and as similarly recited in independent claim 13?

ANALYSIS
The Examiner found that Candelore is prior art to Appellants’ present
application because Appellants are not entitled to claim priority to the ’901
continuation application because it fails to provide adequate support for the
claim limitations emphasized above (Ans. 7). Appellants argue that the ’901
continuation application does have support for these claim limitations
because “page 27 of the specification (lines 19-29), used in conjunction with
Figure 7, describes detailed mechanisms of MPEG transport, and in
particular, the fact that ‘any part or all of MPEG transport stream’ may be
encrypted” (App. Br. 5).1 We agree with Appellants. Figure 7 of the
Specification shows the packets in a transport stream for various
subcategories including video (705(a)), audio (705(b)), EMM (705(d)),
ECM (705(g)), etc. The packets in a subcategory can be considered to form
a digital stream. Moreover, the Specification states that “[a]ny part or all of
MPEG-2 transport stream 701 may be encrypted, except that packet headers
and adaptation fields are never encrypted” (p. 27, ll. 26-27). In other words,
the Specification discloses that some of the portions of the transport stream
shown in FIG. 7 may be encrypted while others may not be encrypted.

1 Although Appellants’ Appeal Brief refer to the specification of the present
application, they also effectively refer to the specification of the ’901
continuation application because the specifications of the two applications
are the same. We also cite to the specification of the present application in
this Opinion to be consistent with the Appeal Brief.
Appeal 2010-005506
Application 10/602,987

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Accordingly, we find that the Examiner erred in finding that the
Specification does not provide support for the claims. Thus, we find that —
contrary to the Examiner’s finding — Appellants are entitled to claim
priority to the ’901 continuation application and therefore, that Candelore is
not prior art. For these reasons, we will not sustain the Examiner’s rejection
of claims 1-19 as anticipated by Candelore.

DECISION
We reverse the Examiner’s decision rejecting claims 1-19 as
anticipated by Candelore.

REVERSED
Vsh