UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF CDMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.0. Box I450
`Alexnndril. Virginia 223 I 3- I450
`WWW usplmgnv
`
`APPLICATION NO.
`
`FILING DATE.
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION ND.
`
`D8."449,4l3
`
`05124;’! 995
`
`JOHN C. HARVEY
`
`5634.l74
`
`1756
`
`7590
`'
`‘FOBI3
`GOODWIN PROCTER LLP
`901 NEW YORK AVENUE, N.W.
`WASHINGTON, DC 20001
`
`oimrioos
`
`.
`
`‘'‘’‘’‘”'”ER
`GROODYJAMESJ
`PAPER NUMBER
`
`ART UNIT
`
`2600
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`073243008
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`. Notice of the Office communication was sent electronically on above-—indicated "Notification Date" to the
`following e-mail address(es):
`
`AAlpha-Kpetewama@goodwinproctcncom
`patentdc@goodwinproc:cr.com
`
`PTOL—90A (Rev. 0410?)
`
`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00754
`Page 1002
`
`

`
`Application/Control Number: 08449413
`
`Page 2
`
`Art Unit: 2622
`
`Suspension of Action, At the Initiation of the Office
`
`The instant application has a specification that is identical to one or more patents
`1.
`that are currently under reexamination. The issues present in the reexamination
`proceedings are related to the issues in the instant application. The final
`decisions/determinations made at the end of the reexamination proceedings are likely to
`affect the outcome of the application. To this end, it is appropriate to suspend prosecution
`on the instant application.
`Per applicant's request, however, prosecuti_on in 08/470,571 (INTE) and
`08/487,526 (MULT) will not be suspended in order to pursue the issues that have been
`fully developed in these applications. The outcome of these issues is also likely to affect
`the outcome of the present application.
`
`37 CFR 1.103(e) provides that the Office will notify applicant if the Office
`suspends action in an application on its own initiative.
`
`Accordingly, Ex pane prosecution is SUSPENDED FOR A PERIOD OF SIX (6)
`MONTHS FROM THE DATE OF THIS LETTER. Upon expiration of the period of
`suspension, applicant should make an inquiry as to the status of the application.
`
`Any inquiry concerning this communication or earlier communications from the
`2.
`examiner should be directed to David Ometz, whose telephone number is (571) 272-
`7593. The examiner can normally be reached on Monday—Thursday from 7:00 AM to
`4:30 PM. The examiner can also be reached on alternate Fridays. The fax phone number
`for the organization where-this application or proceeding is assigned is 571-273-8300.
`
`,5/.,m.4.......a
`
`Mark Powell
`
`Director
`TC 2600
`
`/David L. Ometzf
`
`I
`
`SPE
`Art Unit 2622
`
`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00754
`Page 1003
`
`

`
`Docket No.: PMC-003C247
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent Application of:
`John C. Harvey er ml.
`
`Application No.: 03/449,413
`
`Confirmation No.2 1756
`
`Filed: May 24, 1995
`
`Art Unit: 2600
`
`For: SIGNAL PROCESSING APPARATUS AND
`METHODS
`
`Examiner: Groody, James J.
`
`SUPPLEMENTAL AMENDMENT
`
`MS Amendment
`Commissioner for Patents
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`This application had been suspended since 2005 and held in abeyance from examination
`
`by the Office pending final action in a corresponding so-called “A" application, US. Patent
`
`Application, Serial No. 03/449,263. This suspension was based on an agreement made between
`
`Applicants and the Office to consolidate or group the claims of Applicants’ then pending
`
`applications which had been filed prior to June 3, 1995, into a smaller number of applications.
`
`This so-called consolidation agreement resulted from a series of interviews conducted from
`
`November‘ 1998 through June 1999 between Applicants’ representatives and the Office.
`
`In those
`
`interviews, senior Office management suggested that further examination of this application and
`
`Applicants’ other related applications could be expedited by reducing the number of pending
`
`applications. Accordingly, Applicants agreed to consolidate their claims into 56 subject matter
`
`groups and to reduce the number‘ of pending applications accordingly. Applicants’ agreement
`
`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00754
`Page 1004
`
`

`
`was based on the Office’s view that it would be helpful to the Office to examine the claims of the
`
`subject matter groups together.
`
`For each subject matter group, the applications were separated based on whether priority
`
`was claimed to Applicants’ initial 198] Application (U.S. Serial No. 06/3 17,510) or their initial
`
`1987 Continuation-in-Part Application (U.S. Serial No. 07/096,096). The claims from all
`
`applications in a group having the same priority claim were added to a single application
`
`designated an “A” application. The remaining applications were abandoned with the exception
`
`of one so—called “B" application corresponding to each "A" application.
`
`Under this agreement, the PTO suspended prosecution in the “B" applications pending
`
`final action in the corresponding "A" applications. Further, the parties agreed to conduct
`
`interviews in the “A" applications so that the prosecution of those applications could be
`
`efficiently advanced. Under the agreement, subject matter not found to be allowable during
`
`prosecution of an “A" application may be further prosecuted in the “B" application while the
`
`“A" application would be allowed to issue.
`
`In good faith reliance on this consolidation
`
`agreement, Applicants abandoned 169 of their 329 pending applications and filed numerous
`
`amendments adding to the designated "A" applications various claims that had been pending in
`
`the abandoned applications and the designated “B” applications.'
`
`On May 9, 2000, Applicants amended the DECR 81 group "A" application, US. Patent
`
`Application Serial No. 08/449,263, in accordance with the aforementioned agreement. Claims
`
`from related DECR 31 applications were added to the DECR 31 group “A" application.
`
`i As a result of the consolidation. Applicants paid excess claim fees for many of the claims that were added to the
`designated “A” applications. even though Applicants previously paid excess claim fees for those claims when
`they had been added to the abandoned applications and the designated "’B” applications.
`
`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00754
`Page 1005
`
`

`
`Applicants amended some of the “A" Claims on March 8, 2002.
`
`In late 2002 and early
`
`2003, reexamination requests were filed and granted as to Applicants‘ seven previously issued
`
`patents. Subsequent to the initiation of these reexamination proceedings, the Director of
`
`Technology Center 2600 decided to suspend prosecution of this application and the related "A"
`
`application pending resolution of the reexamination proceedings for the issued patents and the
`
`prosecution to appeal to the Board of Patent Appeals and lnterferences ("Board") of two of
`
`Applicants’ pending applications, (1) the INTE application (U.S. Patent Application, Serial No.
`
`O3f470,57l) and (Z) the MULT application (US. Patent Application, Serial No. 03/487,526). As
`
`a result of this decision, the DECR 81 group "A" application (US. Patent Application, Serial No.
`
`03f449,263) was suspended through a number of six month Suspension Notices until January
`
`2009. Consequently, no formal response was made regarding the “A” Claims.
`
`In 2009, as the reexamination proceedings for Applicants’ issued patents had been
`
`substantially completed and decisions had been issued by the Board in the INTE and MULT
`
`applications, Applicants requested that the suspension oftheir‘ various applications be
`
`terminated.
`
`This request was granted in the spring of 2009 and, as a result, applicants met with
`
`Examiner Minh Dieu T. Nguyen for a number of personal interviews in January 20lO. An
`
`agreement was made to cancel or amend numerous of the "A” Claims so that the DECR Bl
`
`group “A” application (U.S. Patent Application Serial No.08I449,263) could issue.
`
`In the instant application, DECR 81 group “B" (US. Patent Application Serial No.
`
`08/449,413), Applicants filed a Supplemental Amendment Under 37 CFR. §l .l 15 on May 9,
`
`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00754
`Page 1006
`
`

`
`2000. Applicants canceled all claims except for claim 2, which they amended. The Examiner
`
`then suspended the application according to the above mentioned consolidation agreement.
`
`Consistent with the consolidation agreement between the Applicants and the Office,
`
`Applicants now wish to pursue the subject matter‘ within the scope of the “A” Claims of the
`
`DECR 81 group “A” application (U.S. Patent Application Serial No. 08/449,263) by claiming
`
`such subject matter that was not patented in the “A" application in the instant “B" application.
`
`Claims 22-55 correspond to various claims of the “A” application with additional amendments
`
`that Applicants believe place the claims in condition for allowance.
`
`In order to aid the Examiner
`
`in understanding the amendments to the claim, Applicants have attached a marked up copy of the
`
`claims (Appendix A) indicating the differences between the “A” Claims and the amended form
`
`submitted herein as claims 22-55.
`
`Applicants believe that claims 22-55 overcome the prior art, and should place the above-
`
`identified patent application in condition for allowance. Applicants respectfully request
`
`favorable consideration ofthe above—identified patent application in view ofthe following
`
`remarks.
`
`Claim 2 which is currently pending in this application will be cancelled.
`
`Amendments to the claims begin on page 5.
`
`Remarks begin on page l4.
`
`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00754
`Page 1007
`
`

`
`AMENDMENT TO THE CLAIMS
`
`App1.ir'rrr1t.s' r'€qu€.s'r
`
`€rrter'iirg the r')€i’r)w rrrm«'r1(£'rrr€rrt.s'
`
`to the r‘r'cHm.s'. Ner-v r‘r'afrn.s' 22-55 crre
`
`arldea’. Claim 2 is r'arir‘eHerI. Cr'rrim.s‘ 22-55 are the rrrzfy perrzlirrg rfrrims.
`
`I — 21. (Cancelled)
`
`22.
`
`(New) A method for controlling the decryption of encrypted programming at a
`
`subscriber station, said method comprising the steps of:
`
`receiving encrypted programming, said encrypted programming having an encrypted
`
`control signal;
`
`detecting said control signal;
`
`passing said control signal to a decryptor at said subscriber station;
`
`decrypting said control signal;
`
`decrypting said encrypted programming to form decrypted programming based on said
`
`control signal; and
`
`presenting said decrypted programming to a viewer or listener.
`
`23.
`
`(New) A method for controlling the decryption of programming at a subscriber
`
`station, said method comprising the steps of:
`
`receiving programming, said programming having a first encrypted digital control
`
`signal portion and an encrypted digital information portion;
`
`detecting said first encrypted digital control signal portion of said programming;
`
`passing said first encrypted digital control signal portion of said programming to a
`
`first decryptor at said subscriber station;
`
`decrypting said first encrypted digital control signal portion of said programming
`
`using said first decryptor at said subscriber station;
`
`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00754
`Page 1008
`
`

`
`passing said encrypted digital information portion of said programming and the
`
`decrypted control signal portion to a second decryptor at said subscriber station;
`
`decrypting said encrypted digital information portion of said programming using
`
`said second decryptor at said subscriber‘ station based on the decrypted control signal portion;
`
`and
`
`presenting said programming.
`
`24.
`
`(New) A method of controlling a remote transmitter station to communicate
`
`program material to a subscriber station and controlling said subscriber station to process or
`
`output a unit of programming, said method comprising the steps of:
`
`receiving a control signal which operates at the remote transmitter station to
`
`control the communication ofa unit of programming and one or more first instruct signals and
`
`communicating said control signal to said remote transmitter station;
`
`receiving a code or datum identifying a unit of programming to be transmitted by
`
`the remote transmitter station, said remote transmitter station transferring said unit of
`
`programming to a transmitter;
`
`receiving at said remote transmitter station one or more second instruct signals
`
`which operate at the subscriber station to identify or decrypt said unit of programming or said
`
`one or more first instruct signals, said remote transmitter station transferring said one or more
`
`second instruct signals to said transmitter; and
`
`transmitting from said remote transmitter station an information transmission
`
`comprising said unit of programming, said one or more first instruct signals, and said one or
`
`more second instruct signals, said one or more first instruct signals being transmitted in
`
`accordance with said control signal.
`
`25.
`
`(New) The method of claim 23, wherein said programming further includes
`
`encrypted video.
`
`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00754
`Page 1009
`
`

`
`26.
`
`(New) The method of claim 23, wherein said subscriber station stores
`
`information that evidences processing said programming.
`
`27.
`
`(New) The method of claim 23, wherein said programming is received at said
`
`subscriber‘ station in one channel of a multichannel signal and a second control signal portion
`
`used to decrypt said programming is included in said multichannel signal outside said one
`
`channeL
`
`28.
`
`(New) The method of claim 23, wherein said subscriber station detects, in a
`
`transmission channel including said programming, a second control signal portion used to
`
`decrypt the first control signal portion.
`
`29.
`
`(New) The method of claim 23, wherein the subscriber station detects, in a
`
`transmission channel for‘ transmitting the programming, a second control signal portion used to
`
`decrypt the first control signal portion, and wherein the second control signal portion is
`
`encrypted, and wherein the second control signal portion is decrypted in order to enable
`
`decryption of the first control signal portion.
`
`30.
`
`(New) The method of claim 23, wherein said programming includes computer
`
`31.
`
`(New) A method of controlling at least one ofa plurality of receiver‘ stations, said
`
`method comprising the steps of:
`
`receiving downloadable code which is effective at said at least one of said
`
`plurality of receiver stations to implement a new technique of decrypting and delivering the
`
`downloadable code to at least one transmitter;
`
`receiving said at least one control signal which at said at least one of said plurality
`
`of receiver stations operates to execute the downloadable code; and
`
`causing said at least one control signal to be communicated to said at least one
`
`transmitter at a specific time,
`
`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00754
`Page 1010
`
`

`
`thereby to transmit at least one information transmission including the
`
`downloadable code and said at least one control signal.
`
`32.
`
`(New) The method of claim 31, wherein a television program is displayed at a
`
`receiver‘ station and said downloadable code and said at least one control signal program said
`
`receiver station to decrypt said television program in accordance with said new technique.
`
`33.
`
`(New) A method of communicating television program material to one or more
`
`receiver stations, said method comprising the steps of:
`
`receiving a television program at a transmitter station and delivering said
`
`television program to a transmitter‘,
`
`receiving and storing one or more instruct signals at said transmitter‘ station, said
`
`one or more instruct signals at said one or more receiver stations operative to implement a new
`
`technique of decrypting;
`
`transferring said one or more instruct signals to said transmitter; and
`
`transmitting said television program and said one or more instruct signals from
`
`said transmitter station to said one or more receiver stations.
`
`34.
`
`(New) A method of processing signals at a receiver station comprising the steps
`
`receiving at least one information transmission;
`
`detecting a plurality of signals on said at least one information transmission;
`
`changing a decryption technique in response to at least a first of said plurality of
`
`decrypting a second of said plurality of signals on the basis of said changed
`
`decryption technique;
`
`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00754
`Page 1011
`
`

`
`passing said decrypted second of said plurality of signals to a controllable device;
`
`controlling said controllable device on the basis of said passed decrypted second
`
`of said plurality of signals.
`
`35.
`
`(New) The method of claim 33, wherein said step of transferring is performed
`
`based on comparison.
`
`36.
`
`(New) The method of claim 33, wherein said step of transferring is performed in
`
`accordance with a schedule.
`
`37.
`
`(New)..The method of claim 36, wherein said schedule specifies a transmission
`
`time and a transmission channel, said method further comprising the steps of receiving and
`
`storing said schedule at said transmitter station.
`
`38.
`
`(New) The method of claim 33, wherein said one or more instruct signals operate
`
`at said one or more receiver stations based on an identifier, said method further comprising the
`
`step of transmitting said identifier.
`
`39.
`
`(New) The method of claim 38, wherein an information transmission including
`
`said television program is received at said one or more receiver stations, wherein said television
`
`program is outputted at said one or more receiver stations, and wherein said identifier identifies
`
`at least one of(i) said television program and (ii) a channel including said television program.
`
`40.
`
`(New) A method of processing signals at a receiver station comprising the steps
`
`receiving at least one information transmission;
`
`detecting a plurality of signals in said at least one information transmission, a first
`
`signal of said plurality of signals including downloadable code;
`
`passing said downloadable code to a processor;
`
`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00754
`Page 1012
`
`

`
`controlling a decryptor to decrypt in a specific fashion on the basis of said
`
`downloadable code;
`
`decrypting at least one second signal of said plurality of signals in said specific
`
`fashion; and
`
`device.
`
`passing said at least one second signal to one of said processor and an output
`
`41.
`
`(New) A method of controlling a receiver station to detect digital data and control
`
`a decryptor based on a varying pattern of timing or location, said method of controlling
`
`comprising the steps of:
`
`receiving programming and delivering said programming to a transmitter;
`
`receiving digital data comprising at least an instruct signal and communicating
`
`said digital data to a signal embedder, said instruct signal operative at said receiver station to
`
`control said decryptor;
`
`controlling said signal embedder to embed said digital data in an information
`
`transmission in a varying pattern of timing or location;
`
`communicating said information transmission to said transmitter; and
`
`transmitting said programming and said information transmission including said
`
`digital data.
`
`42.
`
`(New) A method of processing signals at a receiver station comprising the steps
`
`receiving at least one information transmission;
`
`detecting a plurality of signals on said at least one information transmission;
`
`decrypting at least one of said plurality of signals, said at least one decrypted
`
`signal including at least one instruct signal which is effective to instruct;
`
`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00754
`Page 1013
`
`

`
`passing the at least one decrypted instruct signal to a controllable device; and
`
`controlling said controllable device on the basis of decrypted information
`
`included in said at least one decrypted instruct signal.
`
`43.
`
`(New) A method for decryptor activation in a network comprising:
`
`receiving a transmission comprising encrypted materials;
`
`decrypting under first processor control a first portion of said encrypted materials
`
`in said transmission;
`
`inputting said first portion of said encrypted materials to a decryptor;
`
`decrypting under second processor control a second portion of said encrypted
`
`materials based on said step of decrypting said first portion of said encrypted materials.
`
`44.
`
`(New) The method of claim 43 wherein said transmission in said step of
`
`receiving a transmission is a multichannel signal separated in the frequency domain.
`
`45.
`
`(New) The method of claim 44 wherein said transmission is a cable system
`
`broadcast.
`
`46.
`
`(New) The method of claim 43 wherein said transmission in said step of
`
`receiving a transmission is a multichannel signal separated in the time domain.
`
`47.
`
`(New) The method of claim 43 wherein said transmission in said step of
`
`receiving a transmission is generated at a local data source.
`
`48.
`
`(New) The method of claim 47 wherein said local data source comprises a VCR.
`
`49.
`
`(New) The method of claim 47 wherein said local data source comprises a laser‘
`
`50.
`
`(New) The method of claim 43 wherein said encrypted materials comprise a
`
`portion of a television program.
`
`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00754
`Page 1014
`
`

`
`51.
`
`(New) The method of claim 43, wherein said transmission in said step of
`
`receiving a transmission and a signal necessary for decryption are received from different
`SO11 I'C€S.
`
`52.
`
`(New) The method of claim 5 l, further comprising the step of contacting a
`
`remote transmitter station to receive one of said transmission and said signal necessary for
`
`decryption.
`
`53.
`
`(New) The method of claim 51, wherein a signal necessary for decryption is
`
`communicated by telephone.
`
`54.
`
`(New) A method of providing an enabling signal to a receiver station from a
`
`remote data source, said enabling signal for use in decrypting at the receiver station a
`
`programming signal, said receiver station being programmed to get information necessary for
`
`enabling a programming signal, said method comprising the steps of:
`
`storing at the remote data source one or more control signals for enabling a
`
`decryptor to decrypt a video;
`
`receiving at the remote data source from the receiver station a communication to
`
`get specific enabling information;
`
`communicating, from the remote data source to the receiver station in response to
`
`said communication from the receiver‘ station, a control signal,
`
`whereby the receiver station inputs said control signal to a decryptor, and wherein
`
`said decryptor decrypts said programming signal.
`
`55.
`
`(New) A method of processing signals at a receiver station comprising the steps
`
`receiving one or more information transmissions at said receiver station;
`
`detecting a plurality of signals on said one or more information transmissions, at
`
`least a first of one of said plurality of signals including a control signal;
`
`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00754
`Page 1015
`
`

`
`controlling a decij/ptor in response to said control signal;
`
`decrypting or enabling communication of at least a second of said plurality of
`
`signals on the basis of said step of controlling said decryptor;
`
`passing said decrypted or enabled at least said second of said plurality of signals
`
`to a controllable device; and
`
`controlling said controllable device on the basis of said passed decrypted or
`
`enabled at least said second of said plurality of signals.
`
`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00754
`Page 1016
`
`

`
`Status of claims
`
`REMARKS
`
`New claims 22-55 have been added. They correspond to claims 2, 3, 4, 5, 6, 7, 8, 9, 10,
`
`11,12,19, 21,40,41,42,-43,44, 89,93,109,111,112,113,114,115,116,117,118,123,125,
`
`127, 131, and 134 of the DECR 81 group “A" application (US. Patent Application Serial No.
`
`08/449,263.) The newly presented claims are fully supported by the specification and do not
`
`introduce new matter.
`
`Each of the claims is patentable in light of the prior art. Prior patents Hartung (US.
`
`Patent No. 4,019,201 ), Tang (US. Patent No. 4,253,] 14), and Bond (US. Patent No. 4,390,898)
`
`were cited as having subject matter similar to some of the claims now introduced in claims 22-
`
`55. All three patents disclose the use of encoded control signals or other data to control the
`
`unscrambling of an analog video signal.
`
`The claims of this amendment, however, claim material relating to the encryption and
`
`decryption of signals. Claim 22 is “[a] method for controlling the decryption of encrypted
`
`programming" and contains a step of “decrypting said encrypted programming." Claim 23 is
`
`“[a] method for controlling the decryption of programming” and contains a step of “decrypting
`
`said encrypted digital information portion of said programming.” Claim 24 contains a step of
`
`receiving an instruct signal that can operate to “decrypt said unit of programming or said first
`
`instruct signal.” Claim 31 contains a step of receiving downloadable code that is effective to
`
`“implement a new technique of decrypting.” Claim 33 contains a step of receiving instruct
`
`signals that are operative to "implement a new technique of decrypting.” Claim 34 contains a
`
`step of “decrypting a second of said plurality of signals." Claim 40 contains a step of
`
`"controlling a decryptor to decrypt in a specific fashion” and a step of“decrypting at least one
`
`second signal of said plurality of signals." Claim 41 is a method to “detect digital data and
`
`14
`
`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00754
`Page 1017
`
`

`
`control a decryptor" and contains a step of “receiving digital data." Claim 42 contains a step of
`
`“decrypting at least one of said plurality of signals." Claim 43 is “[a] method for decryptor
`
`activation” and contains a step of “decrypting under first processor control a first portion of said
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`encrypted materials." Claim 54 contains a step wherein a “decryptor decrypts said programming
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`signal.” Claim 55 contains a step of “controlling a decryptor” and a step of “decrypting or
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`enabling communication of at least a second of said plurality of signals."
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`The Board of Patent Appeals and lnterferences decided in Ex pw‘I€ Personalized Media
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`Communications, LLC (Appeal 20034228, Ex prtrfe Reexamination Control 90/006,536) at
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`pages 53-54, that encryption requires a digital signal. Each of the claims of this amendment
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`involves the use of digital signals either through reference to "digital” signals or through
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`reference to “decryption" and “encryption." “Encryption and decryption," the Board goes on to
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`say, “are not broad enough to read on scrambling and unscrambling." Therefore, because
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`Hartung, Tang, and Bond are directed to unscrambling of analog signals, none teach or suggest a
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`method of controlling the decryption of digital information as is presented in the claims of this
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`amendment.
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`Upon entry of this paper, claims 22-55 will be pending and under consideration.
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`Reconsideration is respectfully requested based on the above amendments.
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`11.
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`Conclusion
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`Applicants respectfully submit that all claims are in condition for examination and
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`prompt examination on the merits is earnestly requested.
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`ln the event Applicants have
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`overlooked the need for an extension of time, payment of fee, or additional payment of fee,
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`Applicants hereby petition therefore and authorize that any charges be made to Deposit Account
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`No. 50-4494.
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`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00754
`Page 1018
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`

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`Should the Examiner have any questions regarding any of the above, the Examiner is
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`respectfully requested to telephone the undersigned at 202-346-4000.
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`Dated: April 05, 201 l
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`Respectfully submitted,
`
`By /Thomasl. Scott Jr!
`Thomas J. Scott, Jr.
`
`Registration No.: 27,836
`GOODWIN PROCTER LLP
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`901 New York Avenue, NW
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`Washington, DC 2000i
`(202) 3464000
`Attorney for Applicants
`
`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00754
`Page 1019
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`

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`Appendix A
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`Marked up Copy of Claims 22-55 Indicating the Differences Between Them and Claims 2,
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`3, 4, 5, 6, 7, 8, 9, 10,11, 12,19, 2], 40, 41, 42, 43, 44, 89, 93,109,111,112,113,114-,I]5,I16,
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`117, I18, I23, I25, 127, 131, and 134 of the DECR 81 Group “A” Application
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`(US. Patent Application Serial No. 08/449,263)
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`22.
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`A method for controlling the decryption of encrypted programming at a
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`subscriber station, said method comprising the steps of:
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`receiving encrypted programming, encrypted programming having an encrypted control
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`signal;
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`station;
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`detecting said control signal;
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`passing said control signal to
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`'
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`.‘
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`‘ a decryptor at said subscriber
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`decrypting said control signal;
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`decrypting said encrypted programming to form decrypted programming based on said
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`control signal; and
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`presenting said decrypted programming to a viewer or listener.
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`23.
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`A method for controlling the decryption of programming at a subscriber station,
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`said method comprising the steps of:
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`receiving programming, said programming having a first encrypted digital control
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`signal portion and an encrypted digital information portion;
`
`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00754
`Page 1020
`
`

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`detecting said first encrypted digital control signal portion of said programming;
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`passing said first encrypted digital control signal portion of said programming to a
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`first decryptor at said subscriber station;
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`decrypting said first encrypted digital control signal portion of said programming
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`using said first decryptor at said subscriber station;
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`passing said encrypted digital information portion of said programming
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`and the decrypted control signal portion to a second decryptor at said subscriber station;
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`decrypting said encrypted digital information portion of said programming using
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`said second decryptor at said subscriber station based on the decrypted control signal portion;
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`and
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`presenting said programming.
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`24.
`
`A method of controlling a remote transmitter station to communicate program
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`material to a subscriber station and controlling said subscriber station to process or output digital
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`programming, said method comprising the steps of:
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`receiving
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`a first control signal which operates at
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`the remote transmitter station to control communication of said digital programming and one or
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`more first instruct signals,
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`signal to said remote transmitter‘ station;
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`.' and communicating said control
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`receiving an identifier designating said digital programming to be transmitted by
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`the remote transmitter station said remote transmitter station transferrin said digital
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`programming to a transmitter;
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`receiving at said remote transmitter station said one or more digital second
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`instruct signals which operate at the subscriber station
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`Q
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`identify or decrypt said digital programming or said one or more first instruct signals, said
`
`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00754
`Page 1021
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`remote transmitter station transferring said one or more second instruct signals to said
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`and
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`transmitting from said remote transmitter station to said subscriber station an
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`information transmission comprising said unit of programming, said one or more first instruct
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`signals, and said one or more second instruct signals, said one or more first instruct signals being
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`transmitted in accordance with said
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`control signal.
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`25.
`
`The method
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`of claim 23, wherein said programming further
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`includes encrypted video.
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`26.
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`The method
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`of claim 23, wherein said subscriber station
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`stores information that evidences processing said programming.
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`27.
`
`The method of claim 3Q, wherein said programming is received at said
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`subscriber station in one channel of a multichannel signal and a second control signal portion
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`used to decrypt said programming is included in said multichannel signal outside said one
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`channeL
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`28.
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`The method of claim 3 Q, wherein said subscriber station detects, in a
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`transmission channel including said programming, a second control signal portion used to
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`decrypt the first control signal portion.
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`29.
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`The method of claim 4 Q, wherein the subscriber station detects, in a
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`transmission channel for transmitting the programming, a second control signal portion used to
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`decrypt the first control signal portion, and wherein the second control signal portion is
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`encrypted, and wherein the second control signal portion is decrypted in order to enable
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`decryption of the first control signal portion.
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`30.
`
`The method
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`of claim 23, wherein said programming includes
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`computer data.
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`31.
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`A method of controlling at least one of a plurality of receiver stations, said
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`method comprising the steps of:
`
`PMC Exhibit 2016
`Apple v. PMC
`IPR2016-00754
`Page 1022
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`receiving downloadable code which is effective at said at least one of said
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`plurality of receiver stations to implement a new technique of decrypting and delivering the
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`downloadable code to at least one transmitter",
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`receiving at least one control signal which at said at least