NETFLIX, INC.

Patent Trials and Appeals Board

Jul 1, 2020

14329687 - (D) (P.T.A.B. Jul. 1, 2020)

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.
14/329,687 07/11/2014 James Mitch ZOLLINGER NETF/0038USC1 1029
108911 7590 07/01/2020
Artegis Law Group, LLP / Netflix
7710 Cherry Park Drive Suite T #104
Houston, TX 77095
EXAMINER
DESROSIERS, EVANS
ART UNIT PAPER NUMBER
2491
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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):
jmatthews@artegislaw.com
kcruz@artegislaw.com
sjohnson@artegislaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES MITCH ZOLLINGER and FILIP PAUN1
____________

Appeal 2019-002255
Application 14/329,687
Technology Center 2400
____________

Before ALLEN MacDONALD, BARBARA A. BENOIT,
and MICHAEL M. BARRY, Administrative Patent Judges.

BARRY, Administrative Patent Judge.
DECISION ON APPEAL2
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1–21. See Appeal Br. 1–19; Final Act.
1–16. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as NETFLIX, INC. Appeal Br.
3.
2 We refer herein to the Final Office Action mailed Mar. 9, 2018 (“Final
Act.”), Advisory Action mailed June 7, 2018 (“Post-Final Adv. Act.”),
Appeal Brief filed Oct. 10, 2018 (“Appeal Br.”), Answer mailed Nov. 21,
2018 (“Ans.”), Reply Brief filed Jan. 22, 2019 (“Reply Br.”), and the
Specification filed July 11, 2014 (“Spec.”).
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Application 14/329,687

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Introduction
Appellant describes the invention as “relat[ing] generally to
cryptography in computer networks and, more specifically, to . . . check[ing]
a computer device runs the correct version of a software program based on
obfuscated initiation values of a cryptography protocol.” Spec. ¶ 2.
Claim 1 is representative of the claims on appeal:
1. A method, comprising:
receiving an application update for an application
installed on a computing system, wherein the application
update includes initial setup values for a key exchange
protocol to be performed with a server machine, and the
initial setup values are associated only with a current version
of the application;
storing the initial setup values in a secret module
included in a secure communication module associated with
the computing system, wherein the secret module is
obfuscated;
applying the application update to the application;
performing, based on the initial setup values, the key
exchange protocol with the server machine to generate a key
uniquely associated with the current version of the application;
and
storing the key in the secure communication module.
Appeal Br. 15 (Claims App’x) (disputed step emphasized).
Rejections3
The Examiner rejected claims 1, 4, 6–10, 13, 15–19, and 21 under 35
U.S.C. § 103 as unpatentable over Boesgaard Soerensen (US 2013/0254845

3 The Examiner indicated claims 2, 3, 5, 11, 12, 14, and 20 would be
allowable if rewritten. See Final Act. 12; Post-Final Adv. Act. 1; Ans. 3.
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A1; Sept. 26, 2013) (“Boesgaard”), Moroney (US 2009/0296940 A1; Dec. 3,
2009), and Bianco (US 6,345,359 B1; Feb. 5, 2002). See Final Act. 7–12.
The Examiner also rejected all pending claims “on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1–25 of US patent No. 8,782,420.” Final Act. 3; see also id. at 4–6.
Although the Examiner states this is a provisional double patenting rejection,
on its face, this is not a provisional rejection since the conflicting claims
have been patented.
ANALYSIS
35 U.S.C. § 103 Rejection
In rejecting claim 1 as obvious, the Examiner relies on Boesgaard to
teach the disputed step of “receiving an application update for an application
installed on a computing system, wherein the application update includes
initial setup values for a key exchange protocol to be performed with a
server machine, and the initial setup values are associated only with a
current version of the application.” Final Act. 7–8. In particular, for
teaching “receiving an application update . . . installed on a comput[er]
system, wherein the application update includes initial setup values for a key
exchange protocol to be performed with a server machine,” the Examiner
relies Boesgaard’s disclosure of a server updating key generation software
on a client computer. Id. (citing Boesgaard ¶¶ 303, 409, 425, 522, 535).
For teaching that “the initial setup values are associated only with a current
version of the application,” the Examiner relies on Boesgaard’s disclosure
for computing authentication tags that are used for document authentication.
Id. at 8 (citing Boesgaard ¶¶ 81–84).

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Appellant contends the Examiner errs by improperly combining
disparate disclosures from Boesgaard and that Boesgaard fails to teach or
suggest the disputed step’s requirement that the “initial setup values for a
key exchange protocol” “are associated only with a current version of the
application,” as recited. See Appeal Br. 11–13; Reply Br. 3–5. Particularly
and persuasively, Appellant argues Boesgaard’s disclosure of generating
authentication tags for documents is unrelated to initial setup values that are
associated only with a current version of an application and are for a key
exchange protocol to be performed with a server, as recited. Id. at 11.
The Examiner responds “that the specification of the current
application does not provide any specific description for ‘initial setup
values’” and that, under the broadest reasonable interpretation, the values
disclosed in Boesgaard paragraphs 425 and 522 “can be equated to ‘initial
setup values’ of the current application.’” Ans. 11 (emphasis omitted). The
Examiner’s response is unpersuasive because it does not address the specific
recitation in claim 1 that the “initial values [are] for a key exchange
protocol.” The key exchange technology discussed in Boesgaard paragraphs
425 and 522 is generally unrelated to the document authentication tag
technology discussed in paragraphs 81–84. In particular, we note there is no
relationship between the use of a cryptographic key as part of an
authentication tag, as discussed in paragraphs 81–84, and the means for
generating a cryptographic key for use in a key exchange protocol, as
discussed in paragraphs 425 and 522.
The Examiner does not explain, for instance, why an artisan of
ordinary skill would have had a reason to use features of generating
cryptographic keys for secure channel communication between two systems
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as part of a document tag system, or vice-versa, as necessary to have arrived
at claim 1’s limitation for initial values for a key exchange protocol
associated only with a current application version. See In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006) (clarifying there must be “articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting Kahn). We also note, contrary to the Examiner’s statement that the
Specification “does not provide any specific description for ‘initial setup
values’” (Ans. 11), Appellant’s Specification provides a specific example
embodiment of initial setup values. See Spec. ¶ 62.
Accordingly, we do not sustain the § 103 rejection of claim 1. We
also, therefore, do not sustain the rejection of independent claims 10 and 19,
which both recite limitations commensurate with the disputed step of claim 1
and stand rejected on the same basis. See Appeal Br. 16–17 (claim 10), 18–
19 (claim 19); Final Act. 11 (claim 10), 11 (claim 19). We likewise do not
sustain the rejection of the dependent claims 2–9, 11–18, 20, and 21.
Non-Statutory, Obviousness-type Double-Patenting Rejection
In view of our reversal of the 35 U.S.C. § 103 rejection of all the
pending claims, we decline to rule on the non-statutory, obviousness-type
double-patenting rejection. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI
2010) (precedential).
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CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Reversed
1–21 103 Boesgaard, Moroney, Bianco 1–21
REVERSED