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 .
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.
This action is in response to the correspondence filed 12/30/2025.
Claims 50-77 are presented for examination.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 50-77 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 10,484,749. Although the claims at issue are not identical, they are not patentably distinct from each other because each of the limitations of claims 50, 60 and 69 of the present application are anticipated by each of the limitations of claim 5/1 of U.S. Patent No. 10,484,749.
Claim Rejections - 35 USC § 112
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 59, 68 and 77 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.
As to claim 59, 68 and 77, the claims recite the limitation "generating the frame key". There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 50-77 are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0081333 to Grab et al. (hereinafter Grab) in view of US 8,781,122 to Chan et al. (hereinafter Chan) (Applicant’s IDS).
As to claims 50, 60 and 69, Grab teaches a playback device for playing back encrypted video, the playback device comprising: a set of one or more processors (FIG. 1, units 110 and 125); and a non-volatile storage containing a playback application for causing the set of one or more processors to perform the steps of: obtaining, at a parser, at least a portion of a container file (FIG. 8 and paragraph 48, receiving video stream), wherein the at least a portion of the container file comprises: video data comprising a partially encrypted frame (paragraphs 40, 42 and 48, wherein the stream includes portions of encrypted video frames); cryptographic material comprising a frame key index that references a frame key by which a portion of the partially encrypted frame is encrypted (paragraphs 40 and 48, decryption information includes key pointer); and a block reference that identifies an encrypted portion of the partially encrypted frame (paragraphs 40 and 48, decryption information includes Offset value into the frame and size of the data field to be decrypted); wherein the partially encrypted frame contains an encrypted portion of data and an unencrypted portion of data (paragraphs 33, 35, 40 and 48, “encrypted portions” and frames including encrypted portions and unencrypted portions); providing the partially encrypted frame, the cryptographic material, and the block reference from the parser to a video decoder (paragraph 48, dispatched to a frame decryption routine which uses the decryption information; FIG. 12 and paragraphs 55 and 56, video decoder receives the protected stream of compressed which includes the decryption information [paragraph 48]); obtaining the frame key index at the video decoder (FIG. 12 and paragraphs 55 and 56, video decoder receives the protected stream of compressed which includes the decryption information that includes the key pointer [paragraphs 40 and 48]); identifying, at the video decoder, the frame key by which the portion of the partially encrypted frame is encrypted using the frame key index and a key table stored on the video decoder (paragraph 48, obtains the applicable decryption key using the decryption information; paragraph 44, keys are stored in a key table; paragraph 40, decryption information includes key pointer); identifying the encrypted portion of the partially encrypted frame using the video decoder based upon the block reference (paragraph 42, determines the specific portion of the frame to be decrypted using decryption information); decrypting the encrypted portion of the partially encrypted frame using the frame key and the video decoder to obtain a decrypted frame (paragraph 48, encrypted portion of the frame is decrypted using the appropriate decryption key); and decoding the decrypted frame for rendering on a display device using the video decoder (paragraph 48, resultant unencrypted frame is then returned from the decryption routine and decompressed/decoded).
Grab does not explicitly teach wherein the frame key index is obtained from the cryptographic material using a cipher and a decryption key.
However, Chan teaches the frame key index is obtained from the cryptographic material using a cipher and a decryption key (Col 5, lines 23-65 and Col 7, line 63 to Col 8, line 16, wherein the cryptographic information contains an index to the frame key and is encrypted wherein the cryptographic material is accessed by being deciphered).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the teachings of Grab to include the method of encrypting and decrypting the frame key index as taught by Chan in order to prevent unauthorized playback by a particular device and/or user, thus optimizing the overall security of the protected content and playback system (Col 5, lines 55-59).
As to claims 51, 61 and 70, Grab teaches wherein the partially encrypted frame is provided by the parser to the video decoder over an unsecured channel (FIGS. 1, 2, 11 and 12, paragraphs 10, 55 and 56, wherein only the data is stated as being protected).
As to claims 52, 62 and 71, Grab teaches wherein the playback application is further for causing the set of one or more processors to separately obtain the decryption key (paragraph 48, obtain applicable decryption key).
As to claims 53, 63 and 72, Grab teaches wherein the block reference comprises offset and length information (paragraph 40, offset value into the frame [i.e., the beginning of the encrypted portion of the frame], and size of the data field to be decrypted).
As to claim 54, Grab teaches wherein the playback application is further for causing the set of one or more processors to perform the steps of: receiving at least a portion of a second container file at the parser, wherein the at least a portion of the second container file comprises: video data comprising a second partially encrypted frame; additional cryptographic material; and a second block reference that identifies an encrypted portion of the second partially encrypted frame; wherein the partially encrypted frame contains an encrypted portion of data and an unencrypted portion of data; providing the second partially encrypted frame, the additional cryptographic material, and the block reference from the parser to the video decoder; obtaining a second frame key at the video decoder, wherein the second frame key is generated from the additional cryptographic material using the cipher and a second decryption key; identifying the encrypted portion of the second partially encrypted frame using the video decoder based upon the second block reference; decrypting the encrypted portion of the second partially encrypted frame using the second frame key and the video decoder to obtain a second decrypted frame; and decoding the second decrypted frame for rendering on a display device using the video decoder (FIGS. 6 and 8 and paragraphs 42 and 48, wherein the steps for both encryption and decryption include determining whether there are more frames to encrypt or decrypt and if it is determined that there are more frames to encrypt or decrypt [Y option on FIG. 6 and 8] the process is repeated as discussed above for a 2nd to N number of containers).
As to claim 55, Grab teaches wherein the additional cryptographic material comprises an encrypted frame key (paragraph 41, a new key is utilized to encrypt a possibly different number of subsequent frames).
As to claim 56, Chan teaches wherein the cipher is an Advanced Encryption System (AES) cipher configured by the decryption key (Col 8, lines 19-23, AES for encrypting or wrapping process).
As to claim 57, Chan teaches wherein the playback application is further for causing the set of one or more processors to communicate with a digital rights management component to generate the second frame key (FIG. 6 and Col 8, lines 5-16 and Col 9, lines 15-28, wherein the authentication engine and wrap key factory of with the DRM component 15).
As to claim 58, Chan teaches wherein the second decryption key is encrypted to enable playback by a particular user (Col 5, lines 55-59, encrypted in a way that only enables playback by a particular device and/or user).
As to claim 59, Grab teaches wherein generating the frame key comprises performing a deciphering procedure that does not require a key to unscramble data (paragraph 47, based on the encryption offset).
As to claims 64 and 73, Chan teaches wherein the cryptographic material comprises an encrypted frame key (Col 5, lines 29-31, frame keys are protected by a cryptographic wrap).
As to claims 65 and 74, Chan teaches wherein the cipher is an Advanced Encryption System (AES) cipher configured by the decryption key (Col 8, lines 19-23, AES for encrypting or wrapping process).
As to claims 66 and 75, Chan teaches wherein the playback application is further for causing the set of one or more processors to communicate with a digital rights management component to generate the frame key (FIG. 6 and Col 8, lines 5-16 and Col 9, lines 15-28, wherein the authentication engine and wrap key factory of with the DRM component 15).
As to claims 67 and 76, Chan teaches wherein the decryption key is encrypted to enable playback by a particular user (Col 5, lines 55-59, encrypted in a way that only enables playback by a particular device and/or user).
As to claims 68 and 77, Grab teaches wherein generating the frame key comprises performing a deciphering procedure that does not require a key to unscramble data (paragraph 47, based on the encryption offset).
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 8804956 B2 to Hiriart teaches a method of enciphering the digital content intended to be deciphered and retrieved on mobile terminals which makes it possible to limit the computing power necessary for the deciphering and therefore the energy used to do this. The broadcast content is partially enciphered. A signature of the headers of the pictures ensures the integrity of the data.
US 8401188 B1 to Swaminathan et al. teaches a method for partial encryption of frame-based electronic content including a partial encryption component configured to receive electronic content that includes multiple frames to be displayed according to a chronological sequence. In various embodiments, such frames may include multiple key frames and multiple reference frames. For each reference frame, content of one or more other frames may be dependent on the content of that reference frame. In various embodiments, for each key frame, content of frames to be displayed subsequent to that key frame may not be dependent on content of any frame preceding the key frame in the chronological sequence. In various embodiments, the partial encryption component may be configured to generate partially encrypted content by encrypting a portion of the electronic content without encrypting other portions of the electronic content (e.g., at least some key frames and reference frames).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MALCOLM CRIBBS whose telephone number is (571)270-1566. The examiner can normally be reached Monday-Friday 930a-330p; 430p-630p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eleni Shiferaw can be reached at (571)272-3867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MALCOLM . CRIBBS
Examiner
Art Unit 2497
/MALCOLM CRIBBS/Primary Examiner, Art Unit 2497
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