UNITED STA 1ES p A 1ENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`08/485,507
`
`06/0711995
`
`JOHN C. HARVEY
`
`5634.304
`
`5691
`
`7590
`70813
`GOODWIN PROCTER LLP
`901 NEW YORK A VENUE, N.W.
`WASHINGTON, DC 20001
`
`08/02/2011
`
`EXAMINER
`
`MOORE JR, MICHAEL J
`
`ART UNIT
`
`PAPER NUMBER
`
`2467
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/02/2011
`
`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):
`AA1pha-Kpetewama@ goodwinprocter.com
`patentdc@ goodwinprocter.com
`fmckeon@ goodwinprocter.com
`
`PTOL-90A (Rev. 04/07)
`
`APPLE EX. 1036
`Page 1
`
`

`
`Office Action Summary
`
`Application No.
`
`Applicant(s)
`
`08/485,507
`
`Examiner
`
`HARVEY ET AL.
`
`Art Unit
`
`2467
`MICHAEL J. MOORE, JR.
`I
`-- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE ;J MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`1 )IZ! Responsive to communication(s) filed on 11 Apri/2011.
`2a)[8J This action is FINAL.
`2b)0 This action is non-final.
`3)0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C. D. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`4)[8J Claim(s) 33-63 is/are pending in the application.
`4a) Of the above claim(s) __ is/are withdrawn from consideration.
`5)0 Claim(s) __ is/are allowed.
`6)[8J Claim(s) 33-63 is/are rejected.
`7)0 Claim(s) __ is/are objected to.
`8)0 Claim(s) __ are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)0 The specification is objected to by the Examiner.
`1 0)0 The drawing(s) filed on __ is/are: a)O accepted or b)O objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`11 )0 The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PT0-152.
`
`Priority under 35 U.S.C. § 119
`
`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`a)O All b)O Some * c)O None of:
`1.0 Certified copies of the priority documents have been received.
`2.0 Certified copies of the priority documents have been received in Application No. __ .
`3.0 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment{s)
`1) [8J Notice of References Cited (PT0-892)
`2) 0 Notice of Draftsperson's Patent Drawing Review (PT0-948)
`3) [8Jinformation Disclosure Statement(s) (PTO/SB/08)
`Paper No(s)/Mail Date __ .
`
`4) 0 Interview Summary (PT0-413)
`Paper No(s)/Mail Date. __ .
`5) 0 Notice of Informal Patent Application
`6) 0 Other: __ .
`
`U.S. Patent and Trademark Off1ce
`PTOL-326 (Rev. 08·06)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20110725
`
`APPLE EX. 1036
`Page 2
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`

`
`Application/Control Number: 08/485,507
`Art Unit: 2467
`
`Page 2
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`DETAILED ACTION
`
`Information Disclosure Statement
`
`1.
`
`The information disclosure statements (IDS) submitted on 4/30/99, 4/7/97,
`
`4/17/96, 2/6/96, 12/22/95, and 12/11/95 are in compliance with the provisions of 37
`
`CFR 1.97. Accordingly, the information disclosure statements are being considered by
`
`the examiner.
`
`Double Patenting
`
`2.
`
`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
`
`obviousness-type 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 VanOrnum, 686 F.2d 937,214 USPQ 761 (CCPA 1982); In re Vogel, 422
`
`F.2d 438, 164 USPQ 619 (CCPA 1970); and 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 a nonstatutory
`
`APPLE EX. 1036
`Page 3
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`

`
`Application/Control Number: 08/485,507
`Art Unit: 2467
`
`Page 3
`
`double patenting ground provided the conflicting application or patent either is shown to
`
`be commonly owned with this application, or claims an invention made as a result of
`
`activities undertaken within the scope of a joint research agreement.
`
`Effective January 1, 1994, a registered attorney or agent of record may sign a
`
`terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
`
`37 CFR 3.73(b).
`
`3.
`
`Claims 33-63 are provisionally rejected on the ground of nonstatutory
`
`obviousness-type double patenting as being unpatentable over claims 2, 4-15, 22-26,
`
`28,38-40, 45-48, and 51 of copending Application No. 08/474145. Although the
`
`conflicting claims are not identical, they are not patentably distinct from each other
`
`because of the following correspondences.
`
`Regarding claim 33, "a method of inhibiting piracy of information or enabling a
`
`presentation of programming at a subscriber station" corresponds to "a method of
`
`inhibiting piracy of information at a subscriber station" in claim 2 of the above copending
`
`application.
`
`"Receiving an information transmission from a first remote station" corresponds
`
`to "receiving ... an information transmission from a remote station" in claim 2 of the
`
`above copending application.
`
`"Detecting instruct-to-sample instructions in the information transmission"
`
`corresponds to "detecting instruct-to-sample instructions ... in the information
`
`transmission" in claim 2 of the above copending application.
`
`APPLE EX. 1036
`Page 4
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`

`
`Application/Control Number: 08/485,507
`Art Unit: 2467
`
`Page 4
`
`"Processing, under control of said instruct-to-sample instructions, a datum at said
`
`subscriber station" corresponds to the same in claim 2 of the above copending
`
`application.
`
`"Comparing, under control of said instruct-to-sample instructions, selected
`
`comparison information of said instruct-to-sample instructions to a selected sample of
`
`preprogrammed operating information at said subscriber station, said selected
`
`comparison information and said selected sample of preprogrammed operating
`
`information being selected based on said step of processing, whereby a successful
`
`match indicates that said subscriber station is properly programmed and a failed match
`
`suggests that said preprogrammed operating information at said subscriber station has
`
`been tampered with" corresponds to "detecting ... including selected comparison
`
`information" as well as "processing ... resulting in selection of a selected sample of
`
`preprogrammed operating information" as well as "comparing, under control of said
`
`instruct-to-sample instructions, said selected comparison information of said instruct-to-
`
`sample instructions to said selected sample of preprogrammed operating information at
`
`said subscriber station, whereby a successful match indicates that said subscriber
`
`station is properly programmed and a failed match suggests that said preprogrammed
`
`operating information at said subscriber station has been tampered with" in claim 2 of
`
`the above copending application.
`
`Lastly, "performing, under control of said instruct-to-sample instructions, at said
`
`subscriber station at least one of: disabling the functionality of some portion of said
`
`subscriber station when said step of comparing results in a determination that said
`
`APPLE EX. 1036
`Page 5
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`

`
`Application/Control Number: 08/485,507
`Art Unit: 2467
`
`Page 5
`
`subscriber station has been tampered with or when an instruction is executed based on
`
`said step of comparing and said subscriber station fails to respond in a predetermined
`
`fashion or within a predetermined period of time; communicating appearance-of-
`
`tampering information to a second remote station when said step of comparing results
`
`in a determination that said subscriber station has been tampered with; and enabling at
`
`least some of a programming presentation when said step of comparing results in a
`
`determination that said subscriber station is properly programmed" corresponds to the
`
`same in claim 2 of the above copending application.
`
`Claim 33 is considered not patentably distinct from claim 2 of the above
`
`copending application as only a slight change in wording exists between these two
`
`claims.
`
`This is a provisional obviousness-type double patenting rejection because the
`
`conflicting claims have not in fact been patented.
`
`Regarding claim 33, this claim similarly corresponds to claim 4 of the above
`
`copending application.
`
`Regarding claim 34, this claim similarly corresponds to claim 5 of the above
`
`copending application.
`
`Regarding claim 35, this claim similarly corresponds to claim 6 of the above
`
`copending application.
`
`Regarding claim 36, this claim similarly corresponds to claim 7 of the above
`
`copending application.
`
`APPLE EX. 1036
`Page 6
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`

`
`Application/Control Number: 08/485,507
`Art Unit: 2467
`
`Page 6
`
`Regarding claim 37, this claim similarly corresponds to claim 8 of the above
`
`copending application.
`
`Regarding claim 38, this claim similarly corresponds to claim 9 of the above
`
`copending application.
`
`Regarding claim 39, this claim similarly corresponds to claim 10 of the above
`
`copending application.
`
`Regarding claim 40, this claim similarly corresponds to claim 11 of the above
`
`copending application.
`
`Regarding claim 41, this claim similarly corresponds to claim 12 of the above
`
`copending application.
`
`Regarding claim 42, this claim similarly corresponds to claim 13 of the above
`
`copending application.
`
`Regarding claim 43, this claim similarly corresponds to claim 14 of the above
`
`copending application.
`
`Regarding claim 44, this claim similarly corresponds to claim 15 of the above
`
`copending application.
`
`Regarding claim 45, "a method of decrypting programming at a receiver station"
`
`corresponds to "a method of decrypting ... programming at a receiver station" in claim
`
`22 of the above copending application.
`
`"Receiving an information transmission including encrypted information"
`
`corresponds to "receiving an information transmission including encrypted
`
`programming" in claim 22 of the above copending application.
`
`APPLE EX. 1036
`Page 7
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`

`
`Application/Control Number: 08/485,507
`Art Unit: 2467
`
`Page 7
`
`"Detecting presence of an instruct-to-enable signal" corresponds to the same in
`
`claim 22 of the above copending application.
`
`"Passing said instruct-to-enable signal to a processor" corresponds to the same
`
`in claim 22 of the above copending application.
`
`"Determining a fashion in which said receiver station locates a first decryption
`
`key by processing said instruct-to-enable signal" corresponds to the same in claim 22 of
`
`the above copending application.
`
`"Locating said first decryption key based on said step of determining"
`
`corresponds to "locating said first decryption key ... based on said step of determining"
`
`in claim 22 of the above copending application.
`
`"Decrypting said encrypted information using said first decryption key"
`
`corresponds to "decrypting said encrypted programming using said first decryption key"
`
`in claim 22 of the above copending application.
`
`Lastly, "outputting said programming based on said step of decrypting"
`
`corresponds to "outputting ... said programming based on said step of decrypting" in
`
`claim 22 of the above copending application.
`
`Claim 45 of the instant application does not claim "preprogramming said receiver
`
`station with authorization information including a first decryption key at a particular
`
`location that varies from station to station in said plurality of receiver stations in
`
`accordance with receiver station specific information". Therefore, claim 45 merely
`
`broadens the scope of claim 22 of the above copending application.
`
`APPLE EX. 1036
`Page 8
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`

`
`Application/Control Number: 08/485,507
`Art Unit: 2467
`
`Page 8
`
`It has been held that the omission of an element and its function is an obvious
`
`expedient if the remaining elements perform the same function as before. See In re
`
`Karlson, 136 USPQ 184 (CCPA). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App.
`
`1969). The omission of a reference element whose function is not needed would be
`
`obvious to one skilled in the art.
`
`Regarding claim 46, this claim similarly corresponds to claim 23 of the above
`
`copending application.
`
`Regarding claim 47, this claim similarly corresponds to claim 24 of the above
`
`copending application.
`
`Regarding claim 48, this claim similarly corresponds to claim 25 of the above
`
`copending application.
`
`Regarding claim 49, this claim similarly corresponds to claim 26 of the above
`
`copending application.
`
`Regarding claim 50, this claim similarly corresponds to claim 22 of the above
`
`copending application.
`
`Regarding claim 51, this claim similarly corresponds to claim 28 of the above
`
`copending application.
`
`Regarding claim 52, "a method of decrypting programming at a receiver station"
`
`corresponds to "a method of decrypting ... programming at a receiver station" in claim
`
`38 of the above copending application.
`
`APPLE EX. 1036
`Page 9
`
`

`
`Application/Control Number: 08/485,507
`Art Unit: 2467
`
`Page 9
`
`"Receiving an information transmission including encrypted information"
`
`corresponds to "receiving an information transmission including encrypted
`
`programming" in claim 38 of the above copending application.
`
`"Detecting the presence of a first instruct-to-enable signal including first
`
`processor instructions" corresponds to "detecting presence ... of a first instruct-to-
`
`enable signal including first processor instructions" in claim 38 of the above copending
`
`application.
`
`"Executing said first processor instructions of said first instruct-to-enable signal to
`
`provide a first decryption key" corresponds to "executing said first processor instructions
`
`of said first instruct-to-enable signal to provide ... a second decryption key" in claim 38
`
`of the above copending application.
`
`"Detecting the presence of a second instruct-to-enable signal including second
`
`processor instructions" corresponds to "detecting presence ... of a second instruct-to-
`
`enable signal including second processor instructions" in claim 38 of the above
`
`copending application.
`
`"Executing said second processor instructions to provide a second decryption
`
`key" corresponds to "executing said second processor instructions to provide a third
`
`decryption key" in claim 38 of the above copending application.
`
`"Decrypting said encrypted information using said first and second decryption
`
`keys" corresponds to "decrypting ... said encrypted programming using said second and
`
`third decryption keys" in claim 38 of the above copending application.
`
`APPLE EX. 1036
`Page 10
`
`

`
`Application/Control Number: 08/485,507
`Art Unit: 2467
`
`Page 10
`
`Lastly, "outputting said programming based on said step of decrypting"
`
`corresponds to "outputting ... said programming based on said steps of decrypting" in
`
`claim 38 of the above copending application.
`
`Claim 52 of the instant application does not claim "decrypting an audio portion of
`
`said encrypted programming using a first decryption key" as well as "provide a location
`
`of a second decryption key based on decrypting said audio portion using said first
`
`decryption key". Therefore, claim 52 merely broadens the scope of claim 38 of the
`
`above copending application.
`
`It has been held that the omission of an element and its function is an obvious
`
`expedient if the remaining elements perform the same function as before. See In re
`
`Karlson, 136 USPQ 184 (CCPA). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App.
`
`1969). The omission of a reference element whose function is not needed would be
`
`obvious to one skilled in the art.
`
`Regarding claim 53, this claim similarly corresponds to claim 39 of the above
`
`copending application.
`
`Regarding claim 54, this claim similarly corresponds to claim 40 of the above
`
`copending application.
`
`Regarding claim 55, this claim similarly corresponds to claim 38 of the above
`
`copending application.
`
`Regarding claim 56, this claim similarly corresponds to claim 38 of the above
`
`copending application.
`
`APPLE EX. 1036
`Page 11
`
`

`
`Application/Control Number: 08/485,507
`Art Unit: 2467
`
`Page 11
`
`Regarding claim 57, this claim similarly corresponds to claim 38 of the above
`
`copending application.
`
`Regarding claim 58, "a method of decrypting programming at a receiver station"
`
`corresponds to "a method of decrypting ... programming at a receiver station" in claim
`
`45 of the above copending application.
`
`"Receiving an information transmission including encrypted information"
`
`corresponds to "receiving an information transmission including encrypted programming
`
`from said remote transmitter station" in claim 45 of the above copending application.
`
`"Detecting the presence of an instruct-to-enable signal" corresponds to the same
`
`in claim 45 of the above copending application.
`
`"Passing said instruct-to-enable signal to a processor" corresponds to the same
`
`in claim 45 of the above copending application.
`
`"Automatically tuning said receiver station to a channel designated by said
`
`instruct-to-enable signal" corresponds to automatically ... tuning ... said receiver station
`
`to a particular channel designated by said instruct-to-enable signal" in claim 45 of the
`
`above copending application.
`
`"Receiving enabling information based on said step of tuning" corresponds to
`
`"receiving enabling information on said particular channel designated by said instruct-to-
`
`enable signal" in claim 45 of the above copending application.
`
`"Decrypting said encrypted information by processing said enabling information"
`
`corresponds to "decrypting said encrypted programming by processing said enabling
`
`information" in claim 45 of the above copending application.
`
`APPLE EX. 1036
`Page 12
`
`

`
`Application/Control Number: 08/485,507
`Art Unit: 2467
`
`Page 12
`
`Lastly, "outputting said programming based on said step of decrypting"
`
`corresponds to "outputting said programming ... based on said step of decrypting" in
`
`claim 45 of the above copending application.
`
`Claim 58 of the instant application does not claim "receiving instructions including
`
`an instruct-to-enable signal from a remote transmitter station". Therefore, claim 58
`
`merely broadens the scope of claim 45 of the above copending application.
`
`It has been held that the omission of an element and its function is an obvious
`
`expedient if the remaining elements perform the same function as before. See In re
`
`Karlson, 136 USPQ 184 (CCPA). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App.
`
`1969). The omission of a reference element whose function is not needed would be
`
`obvious to one skilled in the art.
`
`Regarding claim 59, this claim similarly corresponds to claim 46 of the above
`
`copending application.
`
`Regarding claim 60, this claim similarly corresponds to claim 47 of the above
`
`copending application.
`
`Regarding claim 61, this claim similarly corresponds to claim 48 of the above
`
`copending application.
`
`Regarding claim 62, this claim similarly corresponds to claim 45 of the above
`
`copending application.
`
`Regarding claim 63, this claim similarly corresponds to claim 51 of the above
`
`copending application.
`
`Claim Rejections - 35 USC § 102
`
`APPLE EX. 1036
`Page 13
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`

`
`Application/Control Number: 08/485,507
`Art Unit: 2467
`
`Page 13
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`4.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless-
`
`(e) the invention was described in (1) an application for patent, published under section 122(b), by
`another filed in the United States before the invention by the applicant for patent or (2) a patent
`granted on an application for patent by another filed in the United States before the invention by the
`applicant for patent, except that an international application filed under the treaty defined in section
`351 (a) shall have the effects for purposes of this subsection of an application filed in the United States
`only if the international application designated the United States and was published under Article 21 (2)
`of such treaty in the English language.
`
`5.
`
`Claims 45-50 and 52-56 are rejected under 35 U.S.C. 1 02(e) as being
`
`anticipated by Mason (U.S. 4,736,422). Mason teaches all of the limitations of the
`
`specified claims with the reasoning that follows.
`
`Regarding claim 45, "a method of decrypting programming at a receiver station"
`
`is anticipated by the decryption method performed by the receiver shown in Figure 1.
`
`"Receiving an information transmission including encrypted information" is
`
`anticipated by the receiver of Figure 1 that receives an information signal including an
`
`encrypted session keyS (encrypted information).
`
`"Detecting presence of an instruct-to-enable signal; passing said instruct-to-
`
`enable signal to a processor; determining a fashion in which said receiver station
`
`locates a first decryption key by processing said instruct-to-enable signal; locating said
`
`first decryption key based on said step of determining; decrypting said encrypted
`
`information using said first decryption key" is anticipated by the receiver of Figure 1
`
`having a decryption circuit 20 (processor) that utilizes a distribution key D (instruct-to-
`
`enable signal) to recover (locate) a second key P (first decryption key), which is
`
`APPLE EX. 1036
`Page 14
`
`

`
`Application/Control Number: 08/485,507
`Art Unit: 2467
`
`Page 14
`
`subsequently utilized to decrypt and recover the session keyS (encrypted information)
`
`as spoken of on column 3, lines 13-22.
`
`Lastly, "outputting said programming based on said step of decrypting" is
`
`anticipated by the information signal A (programming) output in Figure 1 as a result of
`
`the decryption processing spoken of on column 3, lines 13-22.
`
`Regarding claim 46, "computing a second decryption key, and wherein said step
`
`of decrypting comprises decrypting said encrypted information using said first and
`
`second decryption keys" is anticipated by the generation of a distribution key D (second
`
`decryption key), which is utilized at the receiver along with second key P (first
`
`decryption key) of Figure 1 to recover the session keyS (encrypted information) as
`
`spoken of on column 1, lines 55-65 as well as column 3, lines 13-22.
`
`Regarding claim 47, "wherein said first and second decryption keys are used to
`
`decrypt a video portion of said programming" is anticipated by the information signal A
`
`(programming) output in Figure 1 as a result of the decryption processing spoken of on
`
`column 3, lines 13-22.
`
`Regarding claim 48, "storing information evidencing said step of decrypting" is
`
`anticipated by the resultant decrypted session key S (information evidencing decryption
`
`of encrypted information) that is used by a third decryption circuit 23 of the receiver of
`
`Figure 1 to decrypt the information signal A as spoken of on column 3, lines 13-22.
`
`Regarding claim 49, "determining if said receiver station is decrypting said
`
`encrypted information correctly, and if not, communicating appearance-of-tampering
`
`information to a remote station" is anticipated by the detection of whether an encrypted
`
`APPLE EX. 1036
`Page 15
`
`

`
`Application/Control Number: 08/485,507
`Art Unit: 2467
`
`Page 15
`
`block has been falsified and subsequent interrogation performed by the receiver as
`
`spoken of on column 6, lines 45-61.
`
`Regarding claim 50, "wherein said encrypted information includes television
`
`programming" is anticipated by the decrypted television signal A shown in Figure 1 that
`
`is recovered as a result of decryption of a session keyS (encrypted information) as
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`spoken of on column 3, lines 13-22.
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`Regarding claim 52, "a method of decrypting programming at a receiver station"
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`is anticipated by the decryption method performed by the receiver shown in Figure 1.
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`"Receiving an information transmission including encrypted information" is
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`anticipated by the receiver of Figure 1 that receives an information signal including an
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`encrypted session keyS (encrypted information).
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`"Detecting the presence of a first instruct-to-enable signal including first
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`processor instructions; executing said first processor instructions of said first instruct-to-
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`enable signal to provide a first decryption key; detecting the presence of a second
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`instruct-to-enable signal including second processor instructions; executing said second
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`processor instructions to provide a second decryption key; decrypting said encrypted
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`information using said first and second decryption keys" is anticipated by the receiver of
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`Figure 1 having a decryption circuit 20 (processor) that utilizes a distribution key D (first
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`instruct-to-enable signal, first decryption key) to recover a second key P (second
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`instruct-to-enable signal, second decryption key), which is subsequently utilized to
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`decrypt and recover the session keyS (encrypted information) as spoken of on column
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`3, lines 13-22.
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`APPLE EX. 1036
`Page 16
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`

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`Application/Control Number: 08/485,507
`Art Unit: 2467
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`Page 16
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`Lastly, "outputting said programming based on said step of decrypting" is
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`anticipated by the information signal A (programming) output in Figure 1 as a result of
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`the decryption processing spoken of on column 3, lines 13-22.
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`Regarding claim 53, "storing information evidencing said step of decrypting" is
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`anticipated by the resultant decrypted session key S (information evidencing decryption
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`of encrypted information) that is used by a third decryption circuit 23 of the receiver of
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`Figure 1 to decrypt the information signal A as spoken of on column 3, lines 13-22.
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`Regarding claim 54, "determining if said receiver station is decrypting said
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`encrypted information correctly, and if not, communicating appearance-of-tampering
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`information to a remote station" is anticipated by the detection of whether an encrypted
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`block has been falsified and subsequent interrogation performed by the receiver as
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`spoken of on column 6, lines 45-61.
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`Regarding claim 55, "wherein said first and second decryption keys are used to
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`decrypt a video portion of said programming" is anticipated by the information signal A
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`(programming) output in Figure 1 as a result of the decryption processing spoken of on
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`column 3, lines 13-22.
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`Regarding claim 56, "wherein said encrypted information includes television
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`programming" is anticipated by the decrypted television signal A shown in Figure 1 that
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`is recovered as a result of decryption of a session keyS (encrypted information) as
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`spoken of on column 3, lines 13-22.
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`APPLE EX. 1036
`Page 17
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`

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`Application/Control Number: 08/485,507
`Art Unit: 2467
`
`Page 17
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`6.
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`Claims 58, 59, and 61-63 are rejected under 35 U.S.C. 102(e) as being
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`anticipated by Pitts et al. (U.S. 4,893,248) (hereinafter "Pitts"). Pitts teaches all of the
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`limitations of the specified claims with the reasoning that follows.
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`Regarding claim 58, "a method of decrypting programming at a receiver station"
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`is anticipated by the decryption method shown in Figure 3A-1.
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`"Receiving an information transmission including encrypted information; detecting
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`the presence of an instruct-to-enable signal; passing said instruct-to-enable signal to a
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`processor; automatically tuning said receiver station to a channel designated by said
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`instruct-to-enable signal" is anticipated by the converter 14 receiving a TV program
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`signal (information transmission including encrypted information) embedded with a tag
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`number (instruct-to-enable signal) identifying (designating) a particular pay per view
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`program and corresponding channel as spoken of on column 13, lines 15-21.
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`Lastly, "receiving enabling information based on said step of tuning; decrypting
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`said encrypted information by processing said enabling information; and outputting said
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`programming based on said step of decrypting" is anticipated by the sending of a
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`command signal (enabling information) via the parallel input/output interface 26 and the
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`data buffer 20 to cause the converter 14 to decrypt the inputted pay per view TV
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`program signal with the corresponding embedded tag number as spoken of on column
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`13, lines 21-39.
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`Regarding claim 59, "storing information evidencing said step of decrypting" is
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`anticipated by the sending of a command signal (enabling information) via the parallel
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`input/output interface 26 and the data buffer 20 (storage) to cause the converter 14 to
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`APPLE EX. 1036
`Page 18
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`

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`Application/Control Number: 08/485,507
`Art Unit: 2467
`
`Page 18
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`decrypt the inputted pay per view TV program signal with the corresponding embedded
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`tag number as spoken of on column 13, lines 21-39.
`
`Regarding claim 61, "wherein said enabling information is received in an audio
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`portion of said programming" is anticipated by the converter 14 receiving a TV program
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`signal (conventionally having an audio and video portion) embedded with a tag number
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`(instruct-to-enable signal) identifying (designating) a particular pay per view program
`
`and corresponding channel as spoken of on column 13, lines 15-21.
`
`Regarding claim 62, "wherein said encrypted information includes television
`
`programming" is anticipated by the converter 14 receiving a TV program signal
`
`(conventionally having an audio and video portion) embedded with a tag number
`
`(instruct-to-enable signal) identifying (designating) a particular pay per view program
`
`and corresponding channel as spoken of on column 13, lines 15-21.
`
`Regarding claim 63, "wherein said step of decrypting comprises decrypting a
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`video portion of said programming" is anticipated by the sending of a command signal
`
`(enabling information) via the parallel input/output interface 26 and the data buffer 20 to
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`cause the converter 14 to decrypt the inputted pay per view TV program signal with the
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`corresponding embedded tag number as spoken of on column 13, lines 21-39.
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`Claim Rejections - 35 USC § 103
`
`7.
`
`The following is a quotation of 35 U.S.C. 1 03(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 1 02 of this title, if the differences between the subject matter sought to be patented and
`the prior a