122905.281304
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`page 1
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Application/Control No.: 90/014,223
`
`Filing Date: October 24, 2018
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`Patent: 8,566,868 B 1
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`Attorney Docket No.: 122905.281304
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`Examiner: Jalatee Worjloh
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`Art Unit: 3992
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`Name of Patentee: John Christopher Harvey and James William Cuddihy
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`Title oflnvention: SIGNAL PROCESSING APPARATUS AND METHODS
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`December 7, 2018
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`Mail Stop Ex parte REEXAM
`ATTN: Central Reexamination Unit
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`PATENT OWNER'S STATEMENT
`
`Dear Sir:
`
`This paper is a Patent Owner's Statement filed under 37 C.F.R § 1.530 in response to an "Order
`
`Granting Request For Ex Parte Reexamination" ("Order") mailed November 15, 2018.
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`PMC Exhibit 2148
`Apple v. PMC
`IPR2016-00754
`Page 1
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`122905.281304
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`REMARKS
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`Patent Owner thanks the Examiner for their careful review of the Request for Ex Parte
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`Reexamination.
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`In addition to the related proceedings identified in the Information Disclosure Statement filed
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`October 24, 2018, the Patent Owner would like to bring to the Examiner's attention the
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`following co-pending filings, which are all based on the same patent specification(s):
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`ex parte reexamination request for U.S. Patent 8,713,624, control number 90/014,188;
`ex parte reexamination request for U.S. Patent 8,587,720, control number 90/014, 189;
`ex parte reexamination request for U.S. Patent 8,558,950, control number 90/014, 191;
`ex parte reexamination request for U.S. Patent 7,734,251, control number 90/014,196;
`ex parte reexamination request for U.S. Patent 7,940,931, control number 90/014,220;
`Reissue Application re: U.S. Patent 7,801,304, US Patent Application, Serial No. 15/978,302;
`Reissue Application re: U.S. Patent 8,752,088, US Patent Application, Serial No. 16/053,853
`Reissue Application re: U.S. Patent 7,805,749, US Patent Application, Serial No. 16/183,795;
`Reissue Application re: U.S. Patent 7,827,587, US Patent Application, Serial No. 16/194,429.
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`Patent Owner would like to remind the Examiner of the recently completed reexamination of the
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`instant patent:
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`ex parte reexamination request for U.S. Patent 8,566,868, control number 90/014,195;
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`Consideration is requested of amendments to claim 38, and newly added claims 48-72, as
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`presented in this Patent Owner's Statement (" Statement"). Claims 3 8, and 48-72 are pending.
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`Claims 38 is independent. Claims 48-58 depend on independent claim 38. Claims 59-65 depend
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`on independent claim 17, where claim 17 is not under reexamination. Claims 66-72 depend on
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`independent claim 22, where claim 22 is not under reexamination. All pending claims are
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`marked in accordance with 37 C.F.R. § l.530(d) (2).
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`The amended and new claims do not broaden the claim scope of U.S. Patent 8,566,868 Bl. As
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`shown below, all new and amended claims are supported by both the instant continuation-in-part
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`patent and the parent patent, U.S. Patent 4,694,490, and claim a priority of November 3, 1981.
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`The Patent Owner notes that all the claims in U.S. Patent No. 8,566,868 B 1 were determined by
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`the Examiner who allowed the patent to be supported by U.S. Patent No. 4,694,490 in the Notice
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`of Allowability mailed July 10, 2013.
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`Patent Owner believes the claims as amended or newly presented are patentable, and respectfully
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`requests the Examiner's review and confirmation of amended claim 3 8, and added claims 48-72,
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`at their earliest possible convenience.
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`PMC Exhibit 2148
`Apple v. PMC
`IPR2016-00754
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`Support for Claim Changes
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`Support for amended claim 3 8, and newly added claims 48-72, can be found at least in Figure 6D
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`and in column 20: 11-68 of U.S. Patent 4,694,490, in the section entitled "Co-ordinating Print and
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`Video." Furthermore, U.S. Patent 4,694,490 discloses advertisements may be included in digital
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`data received at a printer (15 :65-68); therefore, the printed recipe in the "Co-ordinating Print and
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`Video" example may include advertising. U.S. Patent 4,694,490 discloses that transmitter
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`stations and receiver stations are found "throughout the United States" and are geographically
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`remote. (See I :6-13, I :42-53.) Figure I and columns 6:22-9:25 discloses a signal processor and
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`its operation including the revising of previously installed operating instructions by a remote
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`source using a communication channel carrying only digital information during reprogramming.
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`(See Fig. 1, 5: 16-22, 9:20-25, 10:4-13.) The receiver station has a plurality of decryption
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`techniques as described at least in columns 4:34-36, 4:65-67, and 8:20-40, and a plurality of
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`methods to select a decryption technique as provided at least in Figures 4A to 4E and in columns
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`12:68 to 15:25, in the section entitled "Methods for Governing the Reception of Programing."
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`These sections disclose that all manner of information can be decrypted at a receiver station,
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`including at least a portion of the computer program received in the "The French Chef' cooking
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`show.
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`(See 20: 11-68.) Furthermore, in the "alternate method" of transmitting "The French
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`Chef' recipe, signal processor 200 is tasked, by itself, with both decryption and transfer of the
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`decrypted recipe to the printer, based solely on the encrypted information. Accordingly, the
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`computer instructions that determine how to form the decryption code to decrypt the recipe, and
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`the pathway so that the decrypted recipe is sent to the printer, are all included in the encrypted
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`recipe transmission. (See 20:60-68.)
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`U.S. Patent 4,694,490 discloses processing microwave signals at least in column 7:22-30.
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`Reception of a multi-channel wireless signal is shown at least in Fig. 1, which is part of Fig. 6D
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`from "The French Chef' example. Figures 6F and 6G show a block diagram of a signal
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`processor apparatus and methods as they might be used at a consumer receiver site. (See 6: 13-
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`15.)
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`A more detailed description of the cooking show example can be found at least in Figures 7 and
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`7F and in columns 240:45 to 245:40 of U.S. Patent 8,566,868 Bl, in the section entitled
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`"Automating U. R. Stations ... Examples #9 and #10 Continued Coordinating Computers,
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`Television, and Print." Note the recipe calls for a particular brand of curry paste, hence an
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`advertisement.
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`Furthermore,
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`in U.S. Patent 8,566,868 Bl, column 245:16-19 states,
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`"(Whichever transmission method is employed the information of said second message can be
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`encrypted and caused to be decrypted in any of the methods described above-for example, in the
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`method of the first message of example #4.)" (Emphasis added.) The second message can be
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`encrypted, and the second message includes computer instructions. U.S. Patent 8,566,868 BI
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`discloses that transmitter stations and receiver stations are geographically remote. (See 11 :37-
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`45.) Figure 2 and columns 9:5-10 and 15: 18 to 18:31 disclose a signal processor and its
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`operation including the revising of previously installed operating instructions. Plural decryption
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`techniques are described at least in column 2:45-48, 6:19-24, 143:63-144:4, 148:16-21, and
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`149:5-37 (where Example #7 describes how algorithms A, B, and C are used to decrypt digital
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`video and digital audio) of U.S. Patent 8,566,868 B 1. U.S. Patent 8,566,868 BI discloses
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`processing microwave signals at least in column 11 :43-45. Reception of a multi-channel
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`wireless signal is shown at least in Fig. 2, which is part of Fig. 7F from the "Coordinating
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`Computers, Television, and Print" example.
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`"Received" or "receiving" does not necessarily require direct reception from a remote source at a
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`receiver station; therefore, addition of the word "originated" adds clarity that direct and indirect
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`reception are covered by the claims. As shown in Fig. 3C and discussed in parent U.S. Patent
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`No. 4,694,490, column 12:46-57, and as shown in Fig. 6 and discussed in continuation-in-part
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`U.S. Patent No. 8,566,868 Bl, column 173:49-58, a field distribution system 93 may buffer and
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`amplify transmissions using amplifiers 94 and 95. The code may be originated from a remote
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`location, but the last transmission along the communication path may be relatively close to the
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`receiver station; however, the code would be a duplicate at each stage of transmission.
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`For the amended and newly added claims, Lockwood and Sedman fail to show or suggest at least
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`any digital decryption. U.S. Patent 4,337,483 ("Guillou") describes digital decryption, but
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`provides only one decryption technique. Guillou may change the electronically transmitted "key
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`K" and the physically delivered key "Ci"; however, the decryption technique that uses these keys
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`never changes.
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`In fact, Guillou' s decryption technique is implemented by fixed function
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`hardware. Guillou fails to show or suggest plural decryption techniques, a computer program,
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`revision of operating instructions, and an instruction based processor.
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`Prior art concerned with decryption has been reviewed including the following:
`
`Data Encryption Standard, FIPS PUB 46 (1977)
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`Data Encryption Standard, FIPS Pub 46-1 (1977)
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`DES Modes of Operation, FIPS Pub 81 (1980)
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`Barnes etal., U.S. Patent No. 4,172,213. ("Barnes")
`
`Rosenblum, U.S. Patent No. 4,182,933. ("Rosenblum")
`
`Guillou, U.S. Patent No. 4,337,483. ("Guillou")
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`Guillou, U.S. Patent No. 4,352,011. ("Guillou '011")
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`Hanas et al., "An Addressable Satellite Encryption System For Preventing Signal
`
`Piracy." ("Hanas")
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`The above prior art discusses encryption and decryption, but is completely silent as to a plurality
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`of decryption techniques at a receiver station. Arguendo, even if a plurality of decryption
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`techniques might be considered a natural consequence of having a first decryption technique,
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`which it is not, none of these prior art references show or suggest how to select which decryption
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`technique to use as claimed because they are completely silent as to having a plurality of
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`decryption techniques.
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`Prior art references concerning the transmission of applications, data, and software in a computer
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`network have been reviewed including the following:
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`Lockwood et al., U.S. Patent No. 4,359,631. ("Lockwood")
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`Hedger et al., "Telesoftware - Value Added Teletext." ("Hedger in IEEE")
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`Hedger, "Telesoftware - Home computing via teletext." ("Hedger in Wireless World")
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`Metcalfe et al., "Ethernet: Distributed Packet Switching for Local Computer Networks."
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`("Metcalfe")
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`Mapp, "Telesoftware for Beginners." ("Mapp")
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`Viewdata and Videotext 1980-81: A Worldwide Report, Transcript of Viewdata '80, First
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`World Conference on Viewdata, Videotex, and Teletext, London, March 26-28,
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`1980. ("Viewdata")
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`Woolfe, VIDEOTEX: the new television/telephone information services. ("Woolfe")
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`Woolfe describes the transmission of "Graphical primitives" on page 167, which Viewdata states
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`on page 619 might be used to "draw a circle about an X-Y coordinate dot position by specifying
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`center location and radius of the circle with one command, for example." Hedger and Hedger in
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`Wireless World show a unidirectional (e.g., teletext) system where software such as games,
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`education, and a mortgage calculator may be downloaded to a receiver station. As a one-way
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`system, telesoftware is unable to return any communications. On page 64 in Hedger in Wireless
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`World, the author offers that a "wired system" may benefit from a return pathway, but
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`acknowledges a cost disadvantage and views a two-way type of system as future research. Mapp
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`goes a little further than Hedger by discussing active research into a "dialect of BASIC" (Mapp,
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`pg. 27) to support a two-way, request-response system that might support, for example, stock
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`quotes.
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`All of these networked computer references that allow transmission of software are completely
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`silent as to any need for encryption, except Viewdata. Viewdata states a PIN or data may be
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`encrypted on pages 193-194, but reasons on page 194,
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`"In the domestic market, which I assume will have only standard Prestel
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`sets, I presume there will not be an encryption capability, so it will be a question
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`of designing viewdata banking services which do not require a high degree of
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`security of data communication. My views on this are probably heretical in
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`banking circles. I see no reason why this choice should not be left to customers
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`themselves. Most individuals, myself included, might feel that their own personal
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`financial affairs are sufficiently uninteresting to anybody else that the use of a
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`standard set, a secret code known only to the individual, and a secure bank
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`database are good enough.
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`"Those not trusting a non-encrypted system, more likely to be businesses,
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`would have to resort either to traditional methods of receiving information from
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`their banks, namely by post, or to invest in more sophisticated terminals which
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`had encryption facilities. The willingness of banks to offer specialisd encrypted
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`services for the few would depend very much on those customers' willingness to
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`pay."
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`Encryption of data is seen in Viewdata as either (1) up to the user's comfort level, (2) possible if
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`a customer is willing to pay enough, and (3) a customer could resort to traditional methods such
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`as by postal service.
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`(Viewdata, pp. 194, 197, 200.) Regardless, these networked computer
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`references that allow transmission of software are completely silent as to having a plurality of
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`decryption techniques at the receiver station as now claimed.
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`Furthermore, a two-way communication system based exclusively on the telephone system had
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`no need for a tuner because 1981 modems used at a receiver station lacked frequency divided
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`channels.
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`Finally, all of the above references are completely silent as to a "receiver station [] arranged for
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`reprogramming said operating instructions by operatively communicating with a source
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`geographically remote from said receiver station, wherein said operatively communicating
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`carries only digital information during said reprogramming," where "said instruction based
`
`processor operates according to operating instructions that support said step of executing" as
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`claimed. The claims require reprogramming operating instructions that support executing a
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`computer program. A computer program and operating instructions are not the same element.
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`Lockwood only shows adding a "program." Adding a program in Lockwood lacks revising
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`operating instruction that support executing a received computer program. The same can be said
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`for Hedger, Hedger in Wireless World, and Sedman. Transmission of software in the other prior
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`art also lacks any suggestion of reprogramming operating instructions that support executing a
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`computer program. Furthermore, reprogramming operating instructions is a more advanced
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`process than installing operating instructions because "reprogramming" typically modifies some
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`operating
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`instructions while other operating
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`instructions remain
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`intact.
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`Furthermore,
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`reprogramming operating instructions has the potential to make the entire computing system
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`inoperable if the reprogramming is not successful.
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`Pending independent claim 38 requires plural decryption techniques, selection of a decryption
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`technique based on at least one digital code received via electronic transmission originated from
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`a location remote from said receiver station, decrypting digitally encrypted data, and said order
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`for said product or said service based on said decrypted digital data. The dependent claims add
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`additional limitations, and do not fall with the independent claim.
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`Patent Owner respectfully requests return of Form PTO-SB-08A filed October 24, 2018 with the
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`Examiner's initials indicating receipt of the listed prior art and relevant non-patent literature
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`documents.
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`What is claimed is:
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`page 10
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`Claims 1-37 have not been amended for purposes of this reexamination.
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`38. (Amended) A method of controlling a receiver station, said receiver station capable of
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`employing a plurality of decryption techniques, said plurality of decryption techniques already
`
`resident at said receiver station prior to said employing, wherein a particular decryption
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`technique is identified based on at least one digital code received via electronic transmission
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`originated from a location remote from said receiver station, each said decryption technique for
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`converting unintelligible digital information into machine readable, machine intelligible digital
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`inform a ti on, comprising:
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`receiving, at said receiver station, a computer program electronically transmitted in a
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`communications channel with mass media programming and digitally encrypted data originated
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`from a transmitter station;
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`decrypting at said receiver station said digitally encrypted data to form decrypted digital data
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`using at least one of said plurality of decryption techniques;
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`outputting said mass media programming;
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`downloading said computer program into memory of an instruction based processor at said
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`receiver station to program operation of said instruction based processor; and
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`executing said computer program using said instruction based processor at said receiver station,
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`which enables said receiver station, in operation, to communicate an order for a product or £!
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`service to a remote station that is remote from said receiver station, said order for said product or
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`said service based on said decrypted digital data.
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`Claims 39-47 have not been amended for purposes of this reexamination.
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`48. (New) The method of claim 38, wherein said instruction based processor operates according
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`to operating instructions that support said step of executing, wherein said receiver station is
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`arranged for reprogramming said operating instructions by operatively communicating with a
`
`source geographically
`
`remote
`
`from
`
`said
`
`receiver station, wherein
`
`said operatively
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`communicating carries only digital information during said reprogramming.
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`IPR2016-00754
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`49. (New) The method of claim 38, wherein said receiver station comprises a tuner for selecting
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`a channel of a wireless transmission, and wherein said step of receiving, at said receiver station,
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`relies on said tuner.
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`50. (New) The method of claim 49, wherein said tuner tunes to microwave frequencies .
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`.2.L (New) The method of claim 38, wherein said mass media programming comprises audio.
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`52. (New) The method of claim 38, wherein said mass media programming comprises video.
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`21. (New) The method of claim 38, wherein said mass media programming is in encoded digital
`form.
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`54. (New) The method of claim 53, wherein said mass media programmmg IS digitally
`
`encrypted, further comprising decrypting said digitally encrypted mass media programming at
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`said receiver station using at least one of said plurality of decryption techniques.
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`2i, (New) The method of claim 54, wherein said digitally encrypted data and said digitally
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`encrypted mass media programming are decrypted using the same decryption technique.
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`56. (New) The method of claim 53, wherein said mass media programming comprises digitally
`
`encoded text.
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`57. (New) The method of claim 56, wherein said mass media programmmg IS digitally
`
`encrypted, further comprising decrypting said digitally encrypted mass media programming at
`
`said receiver station using at least one of said plurality of decryption techniques, wherein said
`
`digitally encrypted data and said digitally encrypted mass media programming are decrypted
`
`using the same decryption technique.
`
`~ (New) The method of claim 38, wherein said step of decrypting is based on a human user
`
`input at said receiver station.
`
`59. (New) The method of claim 17, wherein said receiver station is capable of employing a
`
`plurality of decryption techniques, said plurality of decryption techniques already resident at said
`
`receiver station prior to said employing, wherein a particular decryption technique is indicated
`
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`based on at least one digital code received via electronic transmission originated from a location
`
`remote from said receiver station, each said decryption technique for converting unintelligible
`
`digital information into machine readable, machine intelligible digital information, wherein said
`
`data is digitally encrypted, further comprising decrypting said digitally encrypted data at said
`
`receiver station using at least one of said plurality of decryption techniques prior to said output,
`
`wherein said transmitter station is located remote from said receiver station.
`
`60. (New) The method of claim 59, wherein said at least one digital code is digitally encrypted,
`
`further comprising decrypting said digitally encrypted said at least one digital code at said
`
`receiver station using at least one of said plurality of decryption techniques, wherein said
`
`decrypted said at least one digital code is at least in part used to decrypt said digitally encrypted
`
`data.
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`§L (New) The method of claim 17, wherein said processor operates according to operating
`
`instructions that support said step of executing, wherein said receiver station is arranged for
`
`reprogramming said operating instructions by operatively communicating with a source
`
`geographically remote from said receiver station, wherein said operatively communicating
`
`carries only digital information during said reprogramming.
`
`62. (New) The method of claim 17, wherein said receiver station comprises a tuner for selecting
`
`a channel of a wireless transmission, and wherein said step of receiving, at said receiver station,
`
`relies on said tuner.
`
`63. (New) The method of claim 62, wherein said tuner tunes to microwave frequencies.
`
`64. (New) The method of claim 17, wherein said step of receiving includes receiving said data.
`
`65. (New) The method of claim 64, wherein said data is received at said receiver station in a
`
`different transmission than said computer program in said step of receiving.
`
`66. (New) The method of claim 22, wherein said receiver station is capable of employing a
`
`plurality of decryption techniques, said plurality of decryption techniques already resident at said
`
`receiver station prior to said employing, wherein a particular decryption technique is indicated
`
`based on at least one digital code received via electronic transmission originated from a location
`
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`remote from said receiver station, each said decryption technique for converting unintelligible
`
`digital information into machine readable, machine intelligible digital information, wherein said
`
`data is digitally encrypted, further comprising decrypting said digitally encrypted data at said
`
`receiver station using at least one of said plurality of decryption techniques, wherein said
`
`transmitter station is located remote from said receiver station.
`
`67. (New) The method of claim 66, wherein said at least one digital code is digitally encrypted,
`
`further comprising decrypting said digitally encrypted said at least one digital code at said
`
`receiver station using at least one of said plurality of decryption techniques, wherein said
`
`decrypted said at least one digital code is at least in part used to decrypt said digitally encrypted
`
`data.
`
`68. (New) The method of claim 22, wherein said processor operates according to operating
`
`instructions that support said step of executing, wherein said receiver station is arranged for
`
`reprogramming said operating instructions by operatively communicating with a source
`
`geographically remote from said receiver station, wherein said operatively communicating
`
`carrying only digital information during said reprogramming.
`
`69. (New) The method of claim 22, wherein said step of receiving includes receiving said data.
`
`70. (New) The method of claim 69, wherein said data is received at said receiver station in a
`
`different transmission than said computer program in said step of receiving.
`
`1.L (New) The method of claim 22, wherein said receiver station comprises a tuner for selecting
`a channel of a wireless transmission, and wherein said step of receiving, at said receiver station,
`
`relies on said tuner.
`
`72. (New) The method of claim 71, wherein said tuner tunes to microwave frequencies.
`
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`Please debit Deposit Account 50-4494 for all related fees concerning this Patent Owner's
`
`Statement.
`
`Respectfully submitted,
`
`/Thomas J. Scott, Jr. I
`
`Thomas J. Scott, Jr.
`
`Registration No.: 27,836
`
`PERSONALIZED MEDIA COMMUNICATIONS, LLC
`
`Attorney for Patent Owner
`
`PMC Exhibit 2148
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`IPR2016-00754
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`l'l9l
`
`Pil.l~1Se find be]O\\' audio a tach.ed a.n Office communication concerning thi . application or prttcced·.ng ..
`
`The lime period fo reply, j any. L et in the attached conmmnica: ion.
`
`PTOL-90A (Re . o-w1,
`
`PMC Exhibit 2148
`Apple v. PMC
`IPR2016-00754
`Page 15
`
`

`

`Office Action in Ex Parle Reexamination
`
`Con1rol No.
`90/014,223
`
`Pattern Under Reex.am·111i1ia1Jion
`8566868
`
`Ex:amin.er
`JALA"iEE WORJLOH
`
`Airt Unit
`3992
`
`AIA Status
`No
`
`- The MAii.iNG DA TE of this communicatftJn tiP/)681'$ 011 th8 (:()V,6r $/iHJ with the ,C()rre$pMdtiltC8 tiddl'8$$ -·
`
`a. li;?i Responsive ·to the communlcation(s) filed on 07 December 2018.
`0 A declaratlon(s)taffidavil:(s) under 37 CFIR 1. 13i0{b) was/were flied on __ •
`
`b. 10 This action is made FINAL
`c. 0 A statarnent under 37 CFR 1 -530 has n:ot baen recaived lrom tha patant ownar.
`
`A shortttned statutory period for response to this action is set to expire 2 month(s} from he mailing date of th is letter.
`Failure to respond withln the perilod for response Willi r,esult ln terminatlon of the proceedilng and issuance ,of an ex p.!Ufe reexamination
`certificate in accordance wi h Ui1s action. 37 CFA 1.550td}. EXTEN:SIO:NS OF TIME ARE GOVERNED BY 37 CFR 1.550(c)
`It Uie period ror response specified above is less than thirty (30} days, a response within the statlltory minimum or thirty (30) days
`will be cons·
`roo timely.
`
`Part I
`
`Til-lE FOLLOWING, ATTACI-IMENT(S) AIRE PART OF TH IS ACTION:
`6ZI Nolioe of Re,ferenoes. Cited by Examiner, PiO-892.
`3,. 0
`Interview Summary, P1"0-4 7 4.
`4. □ --
`
`2 0 lnforrmaliorn l:Jlsclos.ure Statement PTO/SBtOO.
`
`The drawings fi led on __ ar,e accepta e.
`
`The proposed drawing oorreclion, liled on __ has been (7a),
`
`Part II SUMMARY OF ACTION
`1 a.
`Claims 17-27 ,38 and 48-72 ara s1.1bjec,t o reexamination.
`Claims. 1-16,28-37' and 39-47 are no subject ·to reexaminaijon.
`, b.
`2. D Claims. __ have been canceled in the present rooxamination proceeding.
`3. 0 Claims ~~ are, patentatlle and/or conlirmed.
`Claims 17~27 ,3§ ana 48-72 are rejected.
`4.
`5. D
`Claims __ are objected to.
`6. D
`0 approved (7b) 0 disapproved.
`7. D
`8. D
`Acknowledgment is made of the priority dlaim under 35 llJ.S.C. 119(a)-(d) or (t}.
`a) D AU b) D Some~ c) D None
`of he certilied copies have
`1 0 been received.
`2 0 not been received.
`3 D been filed in Applicartion No.
`4 0 been filed in reexamination Conb-01 No,. - -
`5 0 been received by the lnternation1al Bureau in PCT application · o.
`Sea the attached detailed Office action fo:r a fist of tile certified copies not received.
`9. D Sinoe the proceeding appears to be in condition ror issiuance or an ex pane ireexamin•atlon certificate exceptfo,r formal
`matters, prosecution as to, the rneril.S is closed in aocordanoe wil!h tlhe practice under Ex pane Quayle, 1935 c.o.
`11 453 O.G,. 213..
`10. 0 Other:
`
`Offloe A¢'tlo11 lrn1 IEx IParte Fl!
`
`'i!:amlnation
`
`Part ol Paper o.
`
`20190109
`
`PMC Exhibit 2148
`Apple v. PMC
`IPR2016-00754
`Page 16
`
`

`

`Application/Control Number: 90/0 14,223
`Art Unit: 3992
`
`Page 2
`
`DETAIL ED ACTION
`
`lntrod11ction
`
`This Office action is responsive to the communication(s) fi led on December 7, 2018.
`
`Claim 38 was amended and claims 48-72 added . New clai ms 59-65 depend on original claim 17
`
`whi le new claims 66-72 depend on ori gi nal claim 22. Hence, claims 17-27 will be reexamined.
`
`Further, this is the ex parte reexaminati on of claim s 17-27, 38, and 48-72 of U.S. Patent
`
`No. 8,566,868 to Harvey er al. ("Harvey") for which a substantial new question of patentability
`
`has been deemed to exist.
`
`References Cited
`
`• U.S. Patent No. 4,359,631 to Lockwood et al. (" Lockwood");
`
`• U.S. Patent No. 4, 172,213 to Barnes et al. ("Barnes");
`
`• U.S. Parent No. 4, 182,933 to Rosenblum (" Rosenblum ");
`
`• U.S. Patent No. 4,337,483 to Guillou ("Gui llou" );
`
`• U.S. Patent No. 4,352,01 I to Guillou (" Guillou 'OJ I);
`
`•
`
`" The use ofMicroCobol for Telesoftware," Vito Sedman ("Sedman");
`
`• Data Encryption Standard, FIPS Pub 46 ( I 977);
`
`• Data Encryption Standard, FIPS Pub 46- 1 (1977);
`
`• DES Modes of Operation, FIPS Pub 81 ( 1980);
`
`•
`
`" An Addressable Satel lite Encryption System for Preventing Signal Piracy" to Hanas
`
`et al. "Hanas;"
`
`•
`
`•
`
`" Telesoftware-Value Added Teletext" to Hedger et al. ("Hedger in fEEE");
`
`" Telesoftware-Home computing vie teletext" to Hedger ("Hedger in Wireless
`
`World");
`
`PMC Exhibit 2148
`Apple v. PMC
`IPR2016-00754
`Page 17
`
`

`

`Application/Control Number: 90/0 14,223
`Art Unit: 3992
`
`Page 3
`
`•
`
`" Ethernet: Distributed Packet Switching for Local Computer Networks" to Metcalfe
`
`•
`
`•
`
`et al. ("Metcalfe");
`
`"Telesoftware for Beginners" to Mapp ("Mapp");
`
`" Viewdata and Videotext 1980-81 : A Worldwide Report, Transcript of Viewdata '80,
`
`First World Conference on Viewdata, Videotex, and Teletext, London, March 26-28,
`
`1980. (" Viewdata"); and
`
`•
`
`"VIDEOTEX: the new television/telephone information services" to Woolfe
`
`("Woolfe" ).
`
`Patent Owner St11te111e11t
`
`Patent Owner (PO) Statement fi led December 7, 2018 has been considered.
`
`PO asserts that "Lockwood and Sedman fail to show or suggest at least any digital
`
`decryption. Guil lou describes digital decryption, but provides onl y one decryption technique."
`
`PO also submits that Data Encryption Standard references, DES Modes of Operation, Barnes,
`
`Rosenblum, Guill ou, Guillou ' 01 I and Hanas discusses encryption and decryption, but are
`
`" completely si lent as to a plurality of decryption techniques at a receiver station" or " how to
`
`select which decryption techn ique to used as claimed because they are completely silent as to
`
`havi ng a plurality of decryption techniques."
`
`Additionally, PO submits that Lockwood, Hedger in IEEE, Hedger in Wireless World,
`
`Metcalfe, Mapp, Viewdata, and Woolfe are all " completely sil ent as to a " receiver station []
`
`arranged for reprogramming said operating instructions by operatively communicating with a
`
`source geographically remote from said receiver station, wherei n said operatively
`
`com municati ng carries only digital information during said reprogramming." PO also asserts that
`
`PMC Exhibit 2148
`Apple v. PMC
`IPR2016-00754
`Page 18
`
`

`

`Application/Control Number: 90/0 14,223
`Art Unit: 3992
`
`Page4
`
`amongst these references only Viewdata discusses encryption, but does not suggest having a
`
`plurality of decryption techniques at the receiver station as claimed.
`
`The Examiner agrees that none of the above prior art references expressly disclose a
`
`decrypting at a receiver station digital encrypted data to form decrypted digital data usi ng at least
`
`one of said plurality of decryption techni ques, where the receiver station has a plurality of
`
`decryption techniques already resident at said receiver station prior to