DETAILED ACTION
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 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.
This Office Action is in response to the amendment submitted on 1/29/2025.
Claims 1-20 have been canceled.
Claims 21-40 are pending for consideration.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Information Disclosure Statement
An applicant’s duty of disclosure of material information is not satisfied by presenting a patent examiner with “a mountain of largely irrelevant data from which he is presumed to have been able, with his expertise and with adequate time, to have found the critical data. It ignores the real world conditions under which examiners work.” Rohm & Haas Co. v. Crystal Chemical Co., 722 F.2d 1556, 1573, 220 U.S.P.Q. 289 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). An applicant has a duty to not just disclose pertinent prior art references but to make a disclosure in such way as not to “bury” it within other disclosures of less relevant prior art. See Golden Valley Microwave Foods Inc. v. Weaver Popcorn Co. Inc., 24 U.S.P.Q.2d 1801 (N.D. Ind. 1992); Molins PLC v. Textron Inc., 26 U.S.P.Q.2d 1889, 1899 (D. Del. 1992); Penn Yan Boats, Inc. v. Sea Lark Boats, Inc. et al., 175 U.S.P.Q. 260, 272 (S.D. Fl. 1972). It is unreasonable for Examiner to review all of the cited references thoroughly. By signing the accompanying 1449 forms, Examiner is merely acknowledging the submission of the cited references and indicating that only a cursory review has been mace.
Examiner notes that Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276 (Ct. App. 2011) (en banc) has significantly restricted the infringement defense of inequitable conduct. A defendant must show that the patent in question would not have been issued but for undisclosed information, and that the patentee had the intent to deceive. Examiner suggests that future Information Disclosure Statements cite only the most relevant/inclusive references or portions thereof.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “user device is configured to provide a signal…” and “decoder device is configured to provide access” in claim 21.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification (see figure 2 and paragraphs 0054 and 0080, “It will be appreciated that many other devices may include the components necessary to provide key information via the non-contact interface 610c on the decoder 252. The fourth embodied portable entitlement key 256c is configured to operate within the footprint of a portable wireless device (e.g., a cell phone, a personal digital assistant (PDA), a pager, etc.)”) as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 21-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 8,819,720. Although the claims at issue are not identical, they are not patentably distinct from each other because both invention are directed to a substantially similar technique of distributing access-restricted content in an internet protocol television ("IPTV") environment based on portable entitlement keys.
Furthermore, Examiner notes that each and every limitation of the instant claims appear to be substantially anticipated by the corresponding claims of the patent application.
Therefore, Examiner respectfully submits that the instant claims and the claims of the patent application are not directed to patentably distinct inventions; thus, properly rejected on the grounds of nonstatutory double patenting, as further outlined below.
Instant Application 18/953781
Patent Application 8,819,720
Claim 21:
A system, comprising:
a key storage unit, comprising at least a key store and an interface; wherein the key store is configured to store a user entitlement key associated with a set of access rights for an account associated with a user; the interface is configured to provide the user entitlement key to a decoder device; and a user device configured to provide a signal to allow provision of the user entitlement key to the decoder device; wherein the decoder device is configured to provide, based at least in part on receiving the signal from the user device to allow provision of the user entitlement key, access to content available according to the set of access rights for the account associated with the user.
Claim 1:
A system for distributing access-restricted content in an internet protocol-based television environment, the system comprising: a decoder unit, in operative communication with a network and locatable in the network by an internet protocol address, and configured to: receive a key from a key store configured to store the key, the key being associated with a set of access rights for an account; and transmit, over the network, entitlement information relating to the set of access rights; and a network entitlement handler unit, in operative communication with the network, and configured to: receive, over the network from the decoder unit, a request for a requested content set; receive, over the network, a set of access-restricted content, the set of access-restricted content having limited accessibility based at least in part on the set of access rights and comprising at least a portion of the requested content set; receive the internet protocol address corresponding to the requesting decoder unit; and transmit the set of access-restricted content over the network to the network address using the internet protocol.
The dependent claims of the instant application recite language similar to the dependent claims of the patent application and are covered by the patent application.
Claims 21-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 8,238,559. Although the claims at issue are not identical, they are not patentably distinct from each other because both invention are directed to a substantially similar technique of distributing access-restricted content in an internet protocol television ("IPTV") environment based on portable entitlement keys.
Furthermore, Examiner notes that each and every limitation of the instant claims appear to be substantially anticipated by the corresponding claims of the patent application.
Therefore, Examiner respectfully submits that the instant claims and the claims of the patent application are not directed to patentably distinct inventions; thus, properly rejected on the grounds of nonstatutory double patenting, as further outlined below.
Instant Application 18/953781
Patent Application 8,238,559
Claim 21:
A system, comprising:
a key storage unit, comprising at least a key store and an interface; wherein the key store is configured to store a user entitlement key associated with a set of access rights for an account associated with a user; the interface is configured to provide the user entitlement key to a decoder device; and a user device configured to provide a signal to allow provision of the user entitlement key to the decoder device; wherein the decoder device is configured to provide, based at least in part on receiving the signal from the user device to allow provision of the user entitlement key, access to content available according to the set of access rights for the account associated with the user.
Claim 1:
A system for distributing access-restricted content in an internet protocol-based television environment, the system comprising: a decoder unit, in operative communication with a network and locatable in the network by a network address, and configured to: receive a key from a key store configured to store the key, the key being associated with a set of access rights for an account; and transmit, over the network, entitlement information relating to the set of access rights; an encoder unit, configured to: receive content from a plurality of content providers; encode at least a portion of the content to create access-restricted content, the access-restricted content and having limited accessibility based at least in part on the set of access rights; and transmit at least a portion of the access-restricted content over the network using the internet protocol; and a network entitlement handler unit, in operative communication with the encoder unit and the network, and configured to: receive, over the network from the decoder unit, a request for a requested content set; receive, from the encoder unit, at least a portion of the access-restricted content, the portion of access-restricted content comprising at least a portion of the requested content set; receive the network address corresponding to the requesting decoder unit; and transmit a transmitted portion of the requested content set over the network to the network address using a transmission scheme, the transmission scheme comprising the internet protocol.
Claim 2:
The system of claim 1, further comprising a plurality of portable entitlement keys, each entitlement key comprising: the key store; a key provider unit, in operative communication with the key store, and configured to provide the key associated with the key store to the decoder unit; and a portable chassis, operatively coupled with the key store and the key provider unit.
Claim 7:
The system of claim 1, wherein: the decoder unit is further configured to receive a requesting key from the key store associated with a requesting account; and the network entitlement handler unit is further configured to: receive the entitlement information relating to the set of access rights associated with the requesting account; determine, based at least in part on the entitlement information, whether the requesting account has an entitlement to receive the requested content set; and transmit the transmitted portion of the requested content set only if the requesting account has the entitlement to receive the requested content set.
Claim 8:
The system of claim 2, wherein: the decoder unit comprises a port configured to: removably couple the portable chassis with the decoder unit; and receive a requesting key from the key provider unit; and the network entitlement handler unit is further configured to: receive the entitlement information relating to the set of access rights associated with the requesting account; determine, based at least in part on the entitlement information, whether the requesting account has an entitlement to receive the requested content set; and transmit the transmitted portion of the requested content set only if the requesting account has the entitlement to receive the requested content set, wherein at least a portion of the entitlement information relates to whether the portable chassis is coupled with the decoder unit at the port.
Claim 9:
The system of claim 1, wherein: the set of access rights is further associated with at least one user, the at least one user having authority to use the account; the decoder unit is further configured to receive a first key from the key store associated with a requesting account; and the network entitlement handler unit is further configured to receive a second key, operable to verify the authority to use the account.
The dependent claims of the instant application recite language similar to the dependent claims of the patent application and are covered by the patent application.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,184,936. Although the claims at issue are not identical, they are not patentably distinct from each other because both invention are directed to a substantially similar technique of distributing access-restricted content in an internet protocol television ("IPTV") environment based on portable entitlement keys.
Furthermore, Examiner notes that each and every limitation of the instant claims appear to be substantially anticipated by the corresponding claims of the patent application.
Therefore, Examiner respectfully submits that the instant claims and the claims of the patent application are not directed to patentably distinct inventions; thus, properly rejected on the grounds of nonstatutory double patenting, as further outlined below.
Instant Application 18/953781
Patent Application 12,184,936
Claim 21:
A system, comprising:
a key storage unit, comprising at least a key store and an interface; wherein the key store is configured to store a user entitlement key associated with a set of access rights for an account associated with a user; the interface is configured to provide the user entitlement key to a decoder device; and a user device configured to provide a signal to allow provision of the user entitlement key to the decoder device; wherein the decoder device is configured to provide, based at least in part on receiving the signal from the user device to allow provision of the user entitlement key, access to content available according to the set of access rights for the account associated with the user.
Claim 1:
An apparatus comprising:
a user input device for receiving a user request for an access-restricted content item; a decoder unit, in operative communication with a network and locatable in the network by an internet protocol address, and configured to: receive the user request for the access-restricted content item; receive a key from a key store configured to store the key, the key being associated with a set of access rights for an account for accessing the access-restricted content item; and transmit, over the network, entitlement information relating to the set of access rights, the user request for the access-restricted content item, and information relating to a viewer installed at an input device; and wherein the decoder unit comprises a port, the port being configured to: provide an electromagnetic interface for at least a portion of a portable chassis such that the decoder unit may receive the key from a key provider unit through the port; and provide a physical interface for at least the portion of the portable chassis such that at least the portion of the portable chassis may be removably coupled to the decoder unit at the port; and a network entitlement handler unit, in operative communication with the network, and configured to: receive, over the network from the decoder unit, the user request for the access-restricted content item and the information relating to the viewer installed at the input device; determine, based on the received information that the viewer installed at the input device is not compatible to display the access-restricted content item; receive, over the network, the access-restricted content item, having limited accessibility based at least in part on the set of access rights; and transmit, the access-restricted content item and a second viewer for installation at the input device over the network to the decoder unit, wherein the second viewer transmitted is compatible for displaying the access-restricted content item at a display associated with the input device.
Claim 31:
A method, comprising: storing a user entitlement key associated with a set of access rights for an account associated with a user in a key store of a key storage unit, wherein the key storage unit comprises an interface configured to provide the user entitlement key to a decoder device; receiving a signal from a user device to allow provision of the user entitlement key to the decoder device; and based at least in part on the received signal, providing access, via the decoder device, to content available according to the set of access rights for the account associated with the user.
Claim 10:
A method comprising: receiving, from a user input device, a user request for an access-restricted content item; providing a decoder unit that is in operative communication with a network and locatable in the network by an internet protocol address, wherein the decoder unit is configured to: receive the user request for the access-restricted content item; receive a key from a key store configured to store the key, the key being associated with a set of access rights for an account for accessing the access-restricted content item; and transmit, over the network, entitlement information relating to the set of access rights, the user request for the access-restricted content item, and information relating to a viewer installed at an input device; and wherein the decoder unit comprises a port, the port being configured to: provide an electromagnetic interface for at least a portion of a portable chassis such that the decoder unit may receive the key from a key provider unit through the port; and provide a physical interface for at least the portion of the portable chassis such that at least the portion of the portable chassis may be removably coupled to the decoder unit at the port; and providing a network entitlement handler unit that in operative communication with the network, wherein the network entitlement handler unit is configured to: receive, over the network from the decoder unit, the user request for the access-restricted content item and the information relating to the viewer installed at the input device; determine, based on the received information that the viewer installed at the input device is not compatible to display the access-restricted content item; receive, over the network, the access-restricted content item, having limited accessibility based at least in part on the set of access rights; and transmit, the access-restricted content item and a second viewer for installation at the input device over the network to the decoder unit, wherein the second viewer transmitted is compatible for displaying the access-restricted content item at a display associated with the input device.
The dependent claims of the instant application recite language similar to the dependent claims of the patent application and are covered by the patent application.
Claims 21-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,722,735. Although the claims at issue are not identical, they are not patentably distinct from each other because both invention are directed to a substantially similar technique of distributing access-restricted content in an internet protocol television ("IPTV") environment based on portable entitlement keys.
Furthermore, Examiner notes that each and every limitation of the instant claims appear to be substantially anticipated by the corresponding claims of the patent application.
Therefore, Examiner respectfully submits that the instant claims and the claims of the patent application are not directed to patentably distinct inventions; thus, properly rejected on the grounds of nonstatutory double patenting, as further outlined below.
Instant Application 18/ 953781
Patent Application 11,722,735
Claim 21:
A system, comprising:
a key storage unit, comprising at least a key store and an interface; wherein the key store is configured to store a user entitlement key associated with a set of access rights for an account associated with a user; the interface is configured to provide the user entitlement key to a decoder device; and a user device configured to provide a signal to allow provision of the user entitlement key to the decoder device; wherein the decoder device is configured to provide, based at least in part on receiving the signal from the user device to allow provision of the user entitlement key, access to content available according to the set of access rights for the account associated with the user.
Claim 1:
An apparatus, comprising: a chassis, wherein a key storage, a key receiver, and a key provider are disposed within the chassis; the key storage configured to store a first key that is associated with a set of access rights for an account associated with a user; the key receiver configured to receive a second key; the key provider configured to: validate the first key within the key storage using the second key; and provide, in response to the validating, the first key to a decoder configured to: retrieve, via a network, account entitlement information associated with the first key; and provide, based on a determination that the account entitlement information comprises access rights for the account associated with the user to access access-restricted content, access to the access-restricted content; an interface, wherein the key provider provides the first key to the decoder via the interface; and a switch that is coupled between the key provider and the interface that allows provision of the first key when closed, and that prevents provision of the first key when open, wherein the switch comprises one or more of a push-button switch, a toggle switch, a rocker switch, a pressure sensitive switch, a heat sensitive switch, an optical switch, or a biometric-based switch.
Claim 21:
A system, comprising:
a key storage unit, comprising at least a key store and an interface; wherein the key store is configured to store a user entitlement key associated with a set of access rights for an account associated with a user; the interface is configured to provide the user entitlement key to a decoder device; and a user device configured to provide a signal to allow provision of the user entitlement key to the decoder device; wherein the decoder device is configured to provide, based at least in part on receiving the signal from the user device to allow provision of the user entitlement key, access to content available according to the set of access rights for the account associated with the user.
Claim 16:
A system, comprising: a key device comprising: a chassis, wherein a key storage, a key receiver, and a key provider are disposed within the chassis; the key storage configured to store a first key that is associated with a set of access rights for an account associated with a user; the key provider configured to: validate the first key within the key storage using the second key; and provide, in response to the validating, the first key to a decoder; the decoder comprising: a processor; and a non-transitory computer readable medium in communication with the processor, the non-transitory computer readable medium having stored thereon computer software comprising a set of instructions that, when executed by the processor, cause the decoder to: retrieve the first key from the key device; retrieve, via a network, account entitlement information associated with the first key; and provide, based on a determination the account entitlement information comprises access rights for the account associated with the user to access access-restricted content, access to the access-restricted content; an interface, wherein the key provider provides the first key to the decoder via the interface; and a switch that is coupled between the key provider and the interface that allows provision of the first key when closed, and that prevents provision of the first key when open, wherein the switch comprises one or more of a push-button switch, a toggle switch, a rocker switch, a pressure sensitive switch, a heat sensitive switch, an optical switch, or a biometric-based switch.
The dependent claims of the instant application recite language similar to the dependent claims of the patent application and are covered by the patent application.
Claims 21-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10,206,002. Although the claims at issue are not identical, they are not patentably distinct from each other because both invention are directed to a substantially similar technique of distributing access-restricted content in an internet protocol television ("IPTV") environment based on portable entitlement keys.
Furthermore, Examiner notes that each and every limitation of the instant claims appear to be substantially anticipated by the corresponding claims of the patent application.
Therefore, Examiner respectfully submits that the instant claims and the claims of the patent application are not directed to patentably distinct inventions; thus, properly rejected on the grounds of nonstatutory double patenting, as further outlined below.
Instant Application 18/953781
Patent Application 10,206,002
Claim 21:
A system, comprising:
a key storage unit, comprising at least a key store and an interface; wherein the key store is configured to store a user entitlement key associated with a set of access rights for an account associated with a user; the interface is configured to provide the user entitlement key to a decoder device; and a user device configured to provide a signal to allow provision of the user entitlement key to the decoder device; wherein the decoder device is configured to provide, based at least in part on receiving the signal from the user device to allow provision of the user entitlement key, access to content available according to the set of access rights for the account associated with the user.
Claim 1:
A portable apparatus, comprising: a portable chassis; a key storage device, on which is stored a key that is associated with a set of access rights for an account associated with a user, the key storage device being disposed within the portable chassis; a key provider that provides the key to a decoder device via an interface, the key provider being disposed within the portable chassis, the decoder device providing access to a set of access-restricted content associated with the user, based on a determination that the account has an entitlement associated with the key to receive a requested content set that is included in the set of access-restricted content, the access-restricted content associated with the user being displayed to the user associated with the access-restricted content on a device that is unassociated with the user or a premises of the user, and wherein the key provider provides the key to the decoder device via the interface by receiving, with the key provider, the key from the key storage device, modulating, with the key provider, the key with a carrier frequency, and wirelessly transmitting, with the key provider, the key that has been modulated to the decoder device via the interface.
The dependent claims of the instant application recite language similar to the dependent claims of the patent application and are covered by the patent application.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 9,392,330. Although the claims at issue are not identical, they are not patentably distinct from each other because both invention are directed to a substantially similar technique of distributing access-restricted content in an internet protocol television ("IPTV") environment based on portable entitlement keys.
Furthermore, Examiner notes that each and every limitation of the instant claims appear to be substantially anticipated by the corresponding claims of the patent application.
Therefore, Examiner respectfully submits that the instant claims and the claims of the patent application are not directed to patentably distinct inventions; thus, properly rejected on the grounds of nonstatutory double patenting, as further outlined below.
Instant Application 18/953781
Patent Application 9,392,330
Claim 21:
A system, comprising:
a key storage unit, comprising at least a key store and an interface; wherein the key store is configured to store a user entitlement key associated with a set of access rights for an account associated with a user; the interface is configured to provide the user entitlement key to a decoder device; and a user device configured to provide a signal to allow provision of the user entitlement key to the decoder device; wherein the decoder device is configured to provide, based at least in part on receiving the signal from the user device to allow provision of the user entitlement key, access to content available according to the set of access rights for the account associated with the user.
Claim 1:
An apparatus, comprising:
a user input device that receives a user authentication input from a user; a key storage device, on which is stored a key that is associated with a set of access rights for an account;
a user input device that receives a user authentication input from a user; a processor that: determines whether the received user authentication input authorizes the user to use the account
a key transmission device that transmits the key to a decoder device,
the decoder device providing access to a set of access-restricted content associated with the user, based on a determination that the account has an entitlement to receive a requested content set that is included in the set of access-restricted content, wherein the access-restricted content associated with the user is displayed to the user associated with the access-restricted content on a device that is unassociated with the user or a premises of the user; and
allows transmission, by the key transmission device, of the key to the decoder device, based on a determination that the received user authentication input authorizes the user to use the account; and prevents transmission, by the key transmission device, of the key to the decoder device, based on a determination that the received user authentication input does not authorize the user to use the account.
Claim 31:
A method, comprising: storing a user entitlement key associated with a set of access rights for an account associated with a user in a key store of a key storage unit, wherein the key storage unit comprises an interface configured to provide the user entitlement key to a decoder device; receiving a signal from a user device to allow provision of the user entitlement key to the decoder device; and based at least in part on the received signal, providing access, via the decoder device, to content available according to the set of access rights for the account associated with the user.
Claim 13:
A method, comprising: receiving, with a user input device, a user authentication input from a user; determining, with a processor, whether the received user authentication input authorizes the user to use the account; based on a determination that the received user authentication input authorizes the user to use the account, allowing transmission, by a key transmission device, of a key to a decoder device, the key being stored in a key storage and the key being associated with a set of access rights for an account, the decoder device providing access to a set of access-restricted content associated with the user, based on a determination that the account has an entitlement to receive a requested content set that is included in the set of access-restricted content, wherein the access-restricted content associated with the user is displayed to the user associated with the access-restricted content on a device that is unassociated with the user or a premises of the user; and based on a determination that the received user authentication input does not authorize the user to use the account, preventing transmission, by the key transmission device, of the key to the decoder device.
The dependent claims of the instant application recite language similar to the dependent claims of the patent application and are covered by the patent application.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 21-24, 27, 31-34, and 37 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Candelore (US 20040088558) (hereinafter Candelore).
Regarding claim 21, Candelore discloses a system, comprising: a key storage unit, comprising at least a key store and an interface (Candelore: paragraphs 0050, 0064, 0060, 0072-0075, 0094 and 0107, “A storage element 212 (e.g., volatile or nonvolatile memory) is previously loaded with one or more keys” … “Examples of certain entitlements may include, but are not limited to access rights or descrambling keys. A descrambling key is generally a code that is required by descrambler logic to recover data in the clear from a scrambled format based on the entitlements granted.”… “Copy-protected digital content will be re-scrambled across an interface interconnecting a destination interface and a source”); wherein the key store is configured to store a user entitlement key associated with a set of access rights for an account associated with a user (Candelore: paragraphs 0050, 0064, 0060, 0072-0075, 0094 and 0107, “A storage element 212 (e.g., volatile or nonvolatile memory) is previously loaded with one or more keys” … “Examples of certain entitlements may include, but are not limited to access rights or descrambling keys. A descrambling key is generally a code that is required by descrambler logic to recover data in the clear from a scrambled format based on the entitlements granted.”); the interface is configured to provide the user entitlement key to a decoder device (Candelore: paragraphs 0076-0078 and 0096-0097, “Upon receiving an authorization (AUTH) message 612 from subscriber management system 610, which may include the STB Serial Num and perhaps global keys (e.g., keys used to decrypt ECMs sent in-band with the content)”… “Headend 410 can deliver one or more service keys (generally referred to as "Service Key") based on the Unique Key stored in descrambler 440. The encrypted Service Key may be stored locally in decoder 401 to facilitate transitions from one channel to another.”); and a user device configured to provide a signal to allow provision of the user entitlement key to the decoder device (Candelore: paragraphs 0076-0078, 0081-0082, 0091 and 0109, “Upon receipt of the RPK message, headend 410 accesses entries of an access control list (listing each entitlement of decoder 401) and verifies decoder 401 is authorization to receive a particular Service Key. If authorized, headend 410 sends the Service Key (encrypted using the Unique Key contained in storage element 450 located in descrambler 440) to decoder 401.”); wherein the decoder device is configured to provide, based at least in part on receiving the signal from the user device to allow provision of the user entitlement key, access to content available according to the set of access rights for the account associated with the user (Candelore: paragraphs 0076-0078, 0081-0082, 0091 and 0109, “decoder 401 may receive a message (e.g., an ECM or an EMM), which tells it what it is authorized to descramble so that it may properly display viewing options to a viewer. Processor 430 can then request Service Keys for selected channels.”).
Regarding claim 31, claim 31 discloses a method claim that is substantially equivalent to the apparatus of claim 21. Therefore, the arguments set forth above with respect to claim 21 are equally applicable to claim 31 and rejected for the same reasons.
Regarding claims 22 and 32, Candelore discloses wherein the user entitlement key comprises a unique code associated with the account that is associated with the user (Candelore: paragraphs 0076, 0082 and 0087-0091, “one or more service keys (generally referred to as "Service Key") based on the Unique Key stored in descrambler 440. The encrypted Service Key may be stored locally in decoder 401 to facilitate transitions from one channel to another. The Service Key is stored in encrypted form, and is loaded as needed into descrambler 440. The Service Key is decrypted within descrambler 440, by using the Unique Key stored in a storage element 450 of descrambler 440.”).
Regarding claims 23 and 33, Candelore discloses wherein the decoder device is configured to: couple with at least the interface of the key storage unit such that the decoder device may receive the user entitlement key through the interface (Candelore: paragraphs 0076-0078, 0081-0082, 0091 and 0109, “decoder 401 may receive a message (e.g., an ECM or an EMM), which tells it what it is authorized to descramble so that it may properly display viewing options to a viewer. Processor 430 can then request Service Keys for selected channels.”).
Regarding claims 24 and 34, Candelore discloses wherein the coupling comprises one or more of a physical coupling, an electromagnetic transmitter, a radio-frequency transmitter, a Bluetooth transmitter, a transmitter utilizing IEEE 802.11 protocols, or an optical transmitter (Candelore: paragraphs 0079 and 0083-0086, “the Service Key for individual shows or movies may be requested by decoder 401 and delivered ahead of time. For example, interactive networks, such as a cable system having return channel 421 such as a DOCSIS modem or Out-of-Band transmitter/receiver for example, can deliver a Request for Program Key (RPK) message from decoder 401 to headend 410. Alternatively, decoder 401 may request the Service Key in real-time for each program accessed.”).
Regarding claims 27 and 37, Candelore discloses wherein the decoder device is configured to store one or more of television programs, podcasts, movies, or music (Candelore: paragraphs 0049 and 0182, “The "program data" comprises any or all of the following: system information, entitlement control message(s), entitlement management message(s), or digital content. The "digital content" in the program data stream may include an image, audio, video or any combination thereof. The content may be in a scrambled or clear format”… “Decoding circuitry 1570 performs decompression of the video and audio content. After decompression, there are two possibilities, 1) digital to analog conversion, e.g. for baseband video out and audio out, or 2) the decompressed digital content can be encoded for transmittal across the Digital Video Interface (DVI).”).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 25 and 35 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Candelore in view of Markley et al. (US 20070204300) (hereinafter Markley).
Regarding claims 25 and 35, Candelore does not explicitly disclose the following limitation which is disclosed by Markley, wherein the decoder device is a virtual device (Markley: paragraph 0034, “Embodiments provide a "plug-in" decoder architecture that allows software decoders to be transparently downloaded, along with media data.”).
Candelore and Markley are analogous art because they are from the same field of endeavor, content protection. At the time of the invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Candelore and Markley before him or her, to modify the system of Candelore to include decoder device is a virtual device of Markley. The suggestion/motivation for doing so would have been to allow software decoders to be transparently downloaded, along with media data (Markley: paragraph 0034).
Claims 26, 28-30, 36 and 38-40 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Candelore in view of Jankins et al. (US 20080046922) (hereinafter Jankins).
Regarding claims 26 and 36, Candelore does not explicitly disclose the following limitation which is disclosed by Jankins, wherein the decoder device is independent of the user and not located at a premises of the user (Jankins: paragraphs 0012-0013, 0019 and 0023, “In another aspect of a particular embodiment the client comprises an IPTV set top box (STB), the method further includes selecting one of the plurality of restriction zones containing the client and determining a fee for receiving the video data in the selected restriction zone”… “IPTV clients selected from the group consisting of clients that are receiving the video data in each of the restriction zones and newly installed (in service less than 30 days) STBs in each of the restriction zones”).
Candelore and Jankins are analogous art because they are from the same field of endeavor, content protection. At the time of the invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Candelore and Jankins before him or her, to modify the system of Candelore to include a decoder device is independent of a user and not located at a premises of the user of Jankins. The suggestion/motivation for doing so would have been to provide a selective information geographically restricted video data to a recipient client (Jankins: paragraph 0026).
Regarding claims 28 and 38, Candelore as modified discloses wherein the decoder device is further configured to provide, with the content, one or more of compatible viewers for installation, electronic program guides or advertisements (Jankins: paragraphs 0011-0013 and 0016-0019, “IPTV clients selected from the group consisting of clients that are receiving the video data in each of the restriction zones and new STBs in each of the restriction zones”). The same motivation to modify Candelore in view of Jankins, as applied in claim 26 above, applies here.
Regarding claims 29 and 39, Candelore as modified discloses wherein the decoder device comprises a network interface and a consumer premises equipment interface (Jankins: paragraphs 0024, 0038 and 0048, “an IPTV system having a graphical user interface (GUI) including a display and a selection device, a method of providing and selecting from the GUI on the display is disclosed. The method includes receiving electronic program guide (EPG) formatted data containing listings for geographic restricted video data; displaying the EPG formatted data on the display”… “an electronic program guide (EPG) (also referred to as a graphical user interface) is transmitted from the IPTV server 120 to the set top box 111 and displayed on STD display 112. A subscriber at the STB selects an entry (listing) from the EPG 114 and his selection is transferred back from the STB to the IPTV server 120. The IPTV server determines which geographically restricted video data listing a user has selected and obtains the rules from the rules database 123. Thus the IPTV server need generate and send an EPG containing restriction data only upon request from a client device (i.e., STB). The data for generating the EPG is stored in the IPTV server database.”). The same motivation to modify Candelore in view of Jankins, as applied in claim 26 above, applies here.
Regarding claims 30 and 40, Candelore as modified discloses wherein the decoder device comprises a network tester for determining characteristics of a network connected via the network interface (Jankins: paragraphs 0012-0014 and 0018-0020, “selecting one of the plurality of restriction zones containing the client and determining a fee for receiving the video data in the selected restriction zone, the EPG further comprises the fee. In another aspect of a particular embodiment the restriction zone is selected using a geographical information system to determine a spatial relationship between the client and the restriction zone”… “a particular embodiment the restriction zone is selected using a geographical information system to determine a spatial relationship between the client and the restriction zone. In another aspect of a particular embodiment the computer program further includes instructions to accept at the server, from the client a selection from the EPG requesting the video data and instructions to send the requested video data from the server to the remote client. In another aspect of a particular embodiment the message further comprises data indicating IPTV set top boxes in each of the plurality of restriction zones and the client further comprises a service provider in the IPTV system.”). The same motivation to modify Candelore in view of Jankins, as applied in claim 26 above, applies here.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Rajagopal (US 20090180614) discloses “Content delivered to client device over an Internet Protocol Multimedia Subsystem (IMS)-based network is protected through a digital rights management (DRM) scheme that leverages IMS service and access infrastructure, such as the IMS core”.
Chow (US 20080168487) discloses “Systems and methods receive data representing geographic areas and blackout events. The data is used by a software module in an IPTV system to determine whether content is to be provided to subscribers”.
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/TRANG T DOAN/
Primary Examiner, Art Unit 2431
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