DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Regarding priority:
Applicant’s amendment is considered to have overcome the issues identified in the claim language concerning priority to provisional application No. 63/587,891. As such, Applicant’s claim to priority to provisional application No. 63/587,891 has been acknowledged.
Regarding the drawings:
The applied objection has been rendered moot in view of the amended claim language and the amended drawings.
Regarding claims rejected under 35 USC 103:
Applicant’s arguments have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Xiong (US 2023/0195947 A1).
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the limitations of “the decrypted video includes a transparent image frame” and “such that the decrypted video, including the transparent image frame, is overlaid on the content element” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Independent claim 1 recites “causing to output, using the computing device, the decrypted video,” which is fails to comply with the enablement requirement because the instant specification fails to describe all ways of “causing to output” that are within the claim scope. The claim breadth encompasses substantially any and all ways of “causing to output,” which can include merely sending code, playing the video, saving or downloading the video, having a person press a button to perform an action that results in outputting the video, and so forth. One example includes merely suggesting that someone else press a button. Further, the claim scope includes outputting via any and all devices. While these are generally well known in the art and predictable, the instant specification does not provide enough direction for all such ways of “causing to output.” As such, one of ordinary skill in the art would be required to perform undue experimentation to achieve the full scope of “causing to output” (i.e., including a solution for all ways of outputting the video) beyond what is reasonably taught by the instant specification.
Independent claims 11 and 20 are substantially similar to independent claim 1 above, and are therefore rejected under the same analysis.
The dependent claims do not rectify this issue, and are therefore likewise rejected.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9-10 and 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 9 recites “presenting… the decrypted video,” which renders the claim indefinite because it is not clear how to interpret this in view of “causing to output... the decrypted video” in parent claim 1. It is not clear whether these refer to the same step, or whether presenting and outputting are different for the purpose of determining infringement. Additionally, claim 9 recites “an image frame,” where it is not clear whether this is the same as the “image frame” in parent claim 1.
Claim 9 is further drawn to “wherein the decrypted video includes an image frame depicting the content element,” which renders the claim indefinite because the parent claim’s image frame is a “transparent image frame [which] is overlaid on the content element.” It is not clear how the image frame is both transparently overlaid over and depicts the content element. These claim limitations appear to relate to separate embodiments as in [0025] of the specification: “[i]n some embodiments, the encrypted video may include a single image frame (e.g., a video frame such as a single-frame video) depicting (or representing) the checking account balance, and the encrypted video (once decrypted) may be configured to be presented on the display screen of the user device such that the decrypted video is presented on top of a portion of the webpage that displays a background color (or colors) of the webpage, for example. In some other embodiments, the encrypted video may include a single image frame (or video frame) that is transparent (e.g., clear and not depicting the checking account balance) and the encrypted video (once decrypted) may be configured to be presented on the display screen, on top of the checking account balance of the webpage, so that when the decrypted video is played, the user can view the checking account balance under the transparent image frame.”
Claim 10 recites similar claim language, and is therefore rejected under the same analysis as above.
Claim 19 is substantially similar to claim 9 above, and is therefore likewise rejected under the same analysis.
Claims 8 and 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Each of claims 8 and 17 recites a determination that “represents that screensharing or screenshotting is occurring,” which renders these claims indefinite because it is not clear whether “screensharing or screenshotting is occurring” is actually part of the claim scope. For instance, the screensharing/screenshotting could be occurring outside of the scope of the claimed elements (i.e., the browser module, computing device, and so forth). A computer outside of the claim elements could be performing the screensharing/screenshotting. Further, people all over the world are generally taking screenshots and/or sharing their screen at any given time. It is not clear whether this counts for “screensharing/screenshotting is occurring.” Thus, a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-3 and 12-13 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Dependent claims 2-3 fail to further limit the subject matter of independent claim 1 because they restate the “transmitting” and “determining” steps of claim 1. Specifically, claim 2 restates “transmitting, using the computing device, the determination to the content decryption module” while claim 3 restates “determining, using the computing device, whether the outputted video is being played.” Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Dependent claims 12-13 are substantially similar to claims 2-3 above, and are therefore likewise rejected.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bartha (US 11,356,580 B1) in view of Dorwin (US 8,891,765 B1) and Xiong (US 2023/0195947 A1).
Regarding claim 1, Bartha discloses: A method comprising: receiving, using a browser module of a computing device (web browser in Bartha), a decrypted video from a content decryption module (e.g., decryption module as in Col. 7, Ll. 58-60 of Bartha), wherein:
the decrypted video is associated with a content element (document content in Bartha) and a digital rights management technology, and (DRM protection as in Col. 7, Ll. 54-55 of Bartha);
Refer to at least Col. 3, Ll. 48-61, Col. 4, Ll. 63-Col. 5, Ll. 6, and Col. 6, Ll. 1-26 of Bartha with respect to receiving an encrypted video associated with the document and decrypting the video using, e.g., Widevine for its content decryption module.
the decrypted video includes a [e.g., white / black] image frame;
Refer to at least Col. 6, Ll. 24-48 and Col. 8, Ll. 1-7 of Bartha with respect to the video comprising frames of opposing colors (e.g., black versus white) depending on a condition.
causing to output, using the computing device, the decrypted video of the HTML element, such that the decrypted video [is layered with the content element];
Refer to at least 402 in FIG. 4, Col. 5, Ll. 48-61, Col. 6, Ll. 13-26, and Col. 6, Ll. 64-Col. 7, Ll. 3 of Bartha with respect to playing and displaying the video.
determining, using the computing device, whether the outputted video is being played; and
Refer to at least the abstract, FIG. 4, Col. 7, Ll. 25-45, and Col. 7, Ll. 55-Col. 8, Ll. 14 of Bartha with respect to detecting a screen capture or screen sharing event and determining whether to stop decoding the video.
transmitting, using the computing device, the determination to the content decryption module.
Refer to at least Col. 7, Ll. 39-42 and Col. 8, Ll. 1-14 of Bartha with respect to the decryption module determining whether to stop or resume decryption/decoding responsive to the screen capture or screen sharing taking place.
While Bartha implements EME, and HTML5 DRM schemes such as Widevine, it does not specify: forming, using the browser module of the computing device, a HyperText Markup Language (HTML) element including the decrypted video; the decrypted video image frame further being a transparent image frame; the layering further being such that the decrypted video, including the transparent image frame, is overlaid on the content element. However, Bartha in view of Dorwin discloses: forming, using the browser module of the computing device, a HyperText Markup Language (HTML) element including the decrypted video;
Refer to at least Col. 7, Ll. 42-43, Col. 10, Ll. 1-5, Col. 13, Ll. 5-10&26-31, and Col. 14, Ll. 42-59 of Dorwin with respect to a browser utilizing HTML5 media elements for playing back decrypted video content.
The teachings of Dorwin likewise concern HTML5 DRM protection tools for protected playback, and are considered to be within the same field of endeavor and combinable as such.
Therefore it would have been obvious to one of ordinary skill in the art before the filing date of Applicant’s invention to modify the teachings of Bartha to use HTML media elements and implement to DRM scheme of Dorwin as it concerns the media stack and CDM because all of the claimed elements were known in the prior art (i.e., HTML functionality for playing videos; particular DRM schemes for HTML5 content protection) and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions (i.e., using video playing functionality for playing videos; using a particular DRM scheme out of multiple schemes such as in Col. 6, Ll. 9-12 of Bartha), and the combination would have yielded predictable results to one of ordinary skill in the art at the time (i.e., playing protected content with a browser using a particular DRM scheme).
Bartha-Dorwin does not specify: the decrypted video image frame further being a transparent image frame; the layering further being such that the decrypted video, including the transparent image frame, is overlaid on the content element. However, Bartha-Dorwin in view of Xion discloses: the decrypted video image frame further being a transparent image frame; the layering further being such that the decrypted video, including the transparent image frame, is overlaid on the content element.
Refer to at least [0031]-[0032] of Xiong with respect to implementing screen capture protection using a floating layer on a content page of a screen, where the floating layer has adjustable transparency.
The teachings of Xiong likewise concern screen capture protection using layered display, and are considered to be within the same field of endeavor and combinable as such.
Therefore it would have been obvious to one of ordinary skill in the art before the filing date of Applicant’s invention to modify the teachings of Bartha-Dorwin to use changeable transparency and the reverse layering of the video over the content element because the substitution of one known element for another (i.e., opposite colors versus different opacities; which element is on top or on the bottom) would have yielded predictable results to one of ordinary skill in the art at the time (changing the visibility of the content element).
Regarding claim 2, it is substantially similar to the “transmitting” step of claim 1 above, and is therefore likewise rejected.
Regarding claim 3, it is substantially similar to the “determining” step of claim 1 above, and is therefore likewise rejected.
Regarding claim 4, Bartha-Dorwin-Xiong discloses: The method of claim 1, wherein the content element includes sensitive data.
Refer to at least Col. 3, Ll. 27-41 of Bartha with respect to the document having content that should be kept secure.
Regarding claim 5, it is rejected for substantially the same reasons as claim 1 above (i.e., the citations).
Regarding claim 6, Bartha-Dorwin-Xiong discloses: The method of claim 1, wherein the determination includes a determination that the outputted video is not playing, and wherein the method further comprises: causing to output, using the computing device, a notification, wherein the notification is associated with the determination that the outputted video is not playing.
Refer to at least Col. 7, Ll. 46-51 of Bartha with respect to reporting to a user responsive to the video being stopped from decryption/decoding and correct playback.
Regarding claim 7, it is rejected for substantially the same reasons as claim 6 above.
Regarding claim 8, Bartha-Dorwin-Xiong discloses: The method of claim 7, wherein the determination that the outputted video is not playing represents that screensharing or screenshotting is occuring.
Refer to at least the abstract and Col. 7, Ll. 25-Col. 8, Ll. 14 of Bartha with respect to preventing correct video playback responsive to detecting a screen capture / screen sharing event.
Regarding claim 9, Bartha-Dorwin-Xiong discloses: The method of claim 1, wherein causing to output, the decrypted video of the HTML element comprises: presenting, using the computing device, the decrypted video, wherein the decrypted video includes an image frame depicting the content element.
Refer to at least the abstract and [0031]-[0032] of Xiong with respect to a full screen floating layer having transparent opacity to display the content page on the screen.
This claim would have been obvious for substantially the same reasons as claim 1 above.
Regarding claim 10, it is rejected for substantially the same reasons as claim 9 above.
Regarding independent claim 11, it is substantially similar to independent claim 1 above, and is therefore likewise rejected (i.e., the citations and obviousness rationale).
Regarding claims 12-18, they are substantially similar to claims 2-18 above, and are therefore likewise rejected.
Regarding claim 19, it is substantially similar to claim 10 above, and is therefore likewise rejected.
Regarding independent claim 20, it is substantially similar to independent claim 1 above (it recites similar subject matter and claim language, but concerns “a computing device” in place of “a browser module of a computing device” as in claim 1), and is therefore likewise rejected (i.e., the citations and obviousness rationale).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VADIM SAVENKOV whose telephone number is (571)270-5751. The examiner can normally be reached 12PM-8PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey L Nickerson can be reached at (469) 295-9235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jeffrey Nickerson/Supervisory Patent Examiner, Art Unit 2432
/V.S/Examiner, Art Unit 2432
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