Ex Parte Wasilewski et al

Board of Patent Appeals and Interferences

Jul 31, 2012

10602988 (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.
10/602,986 06/25/2003 Anthony J. Wasilewski 60374.0029USC8/A-9233 3781
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 2010-005706
Application 10/602,986
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 2010-005706
Application 10/602,986

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-22 (App. Br. 2). Claims 23-27 were cancelled (Id.). We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The Invention
Exemplary Claim 1 follows:
1. A method for providing an instance in a conditional access system,
the method comprising the steps of:

selecting for encryption a digital bit stream from a plurality of digital
bit streams using an identifier;

encrypting the selected digital bit stream according to a first level
encryption method to provide an encrypted instance;

combining the encrypted instance with the plurality of digital bit
streams to provide a partially encrypted bit stream; and

transmitting the partially-encrypted bit stream.

The Examiner rejected claims 1-22 under 35 U.S.C. § 102(e) as being
anticipated by Candelore (U.S. 7,376,233) (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
Appeal 2010-005706
Application 10/602,986

3
’901 continuation application fails to provide adequate support for a
“partially encrypted bit stream” as recited in claim 1, and as similarly recited
in claims 5 and 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
claimed “partially encrypted bit stream” and similar limitations (Ans. 8).
The Examiner also found that there is no disclosure in the ’901 continuation
application of a part of a bitstream being encrypted (Id. at 9). 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,

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 2010-005706
Application 10/602,986

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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.
Accordingly, we find that the Examiner erred in finding that the
Specification does not provide support for the claimed limitations of
encrypting a part of a bitstream or forming a partially encrypted bit stream.
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 1-22 as anticipated by Candelore.

DECISION
We reverse the Examiner’s decision rejecting claims 1-22 as
anticipated by Candelore.

REVERSED

pgc