Docket No.: PMC-003C180
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent Application of:
`John C. Harvey et al.
`
`Application No.: 08/485,507
`
`Confirmation No.: 5691
`
`Filed: May 24, 1995
`
`Art Unit: 2600
`
`For: SIGNAL PROCESSING APPARATUS AND
`METHODS
`
`Examiner: Groody, James J.
`
`AMENDMENT AFTER FINAL REJECTION AND REQUEST FOR
`RECONSIDERATION
`
`MSAF
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`In response to the Office Action mailed August 2, 2011, ("Office Action" or "the
`
`Action") from the Patent and Trademark Office ("the Office") rejecting Claims 33-63, please
`
`amend the above-identified U.S. patent application as follows:
`
`Amendment to the Claims are reflected in the listing of the claims that begins on page 2
`
`of this paper.
`
`Remarks begin on page 7.
`
`APPLE EX. 1037
`Page 1
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent Application of:
`John C. Harvey et al.
`
`Application No.: 08/485,507
`
`Confirmation No.: 5691
`
`Filed: May 24, 1995
`
`Art Unit: 2600
`
`For: SIGNAL PROCESSING APPARATUS AND
`METHODS
`
`Examiner: Groody, James J.
`
`AMENDMENT AFTER FINAL REJECTION AND REQUEST FOR
`RECONSIDERATION
`
`MSAF
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dear Sir:
`
`In response to the Office Action mailed August 2, 2011, ("Office Action" or "the
`
`Action") from the Patent and Trademark Office ("the Office") rejecting Claims 33-63, please
`
`amend the above-identified U.S. patent application as follows:
`
`Amendment to the Claims are reflected in the listing of the claims that begins on page 2
`
`of this paper.
`
`Remarks begin on page 7.
`
`APPLE EX. 1037
`Page 1
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`
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`Docket No.: PMC-003Cl80
`
`AMENDMENT TO THE CLAIMS
`
`33.
`
`(Previously Presented) A method of inhibiting piracy of information or enabling a
`
`presentation of programming at a subscriber station, said method comprising the steps of:
`
`receiving an information transmission from a first remote station;
`
`detecting instruct-to-sample instructions in the information transmission;
`
`processing, under control of said instruct-to-sample instructions, a datum at said
`
`subscriber station;
`
`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; and
`
`performing, under control of said instruct-to-sample instructions, at said subscriber
`
`station at least one of the steps of:
`
`(1) disabling the functionality of some portion of said subscriber station (i) when
`
`said step of comparing results in a determination that said subscriber station has been
`
`tampered with or (ii) 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;
`
`(2) 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
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`(3) enabling at least some of a programming presentation when said step of
`
`comparing results in a determination that said subscriber station is properly programmed.
`
`2
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`APPLE EX. 1037
`Page 2
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`Docket No.: PMC-003C180
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`34. (Previously Presented) The method of claim 33, wherein said comparing step is
`
`performed under control of a selected subroutine of said instruct-to-sample instructions.
`
`35. (Previously Presented) The method of claim 34, wherein said subscriber station
`
`selects said selected subroutine based on said step of processing.
`
`36. (Previously Presented) The method of claim 35, wherein said datum comprises a
`
`station specific identifier.
`
`37. (Previously Presented) The method of claim 36, wherein said subscriber station
`
`selects said station specific identifier.
`
`38. (Previously Presented) The method of claim 33, wherein said step of performing
`
`includes said step of disabling and wherein said step of disabling includes erasing information
`
`from memory.
`
`39. (Previously Presented) The method of claim 38, wherein a read only memory is
`
`disabled.
`
`40. (Previously Presented) The method of claim 33, wherein said step of performing
`
`includes said step of disabling and wherein said step of disabling includes disabling a decryptor.
`
`41. (Previously Presented) The method of claim 33, wherein said step of performing
`
`includes said step of communicating and wherein said step of communicating includes
`
`establishing telephone communications.
`
`42. (Previously Presented) The method of claim 33, wherein said step of performing
`
`includes said step of communicating and wherein said step of communicating includes
`
`transmitting an identifier of said subscriber station to said second remote station.
`
`43. (Previously Presented) The method of claim 33, wherein said step of comparing
`
`results in a determination that said subscriber station may have been tampered with and said
`
`subscriber station performs both of said steps of disabling and communicating.
`
`3
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`APPLE EX. 1037
`Page 3
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`
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`Docket No.: PMC-003C180
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`44. (Previously Presented) The method of claim 33, wherein said step of performing
`
`includes said step of enabling and wherein said step of enabling includes controlling a decryptor.
`
`45. (Currently Amended) A method of decrypting programming at a receiver station,
`
`said method comprising the steps of:
`
`receiving an information transmission including encrypted information;
`
`detecting in said information transmission the 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; and
`
`outputting said programming based on said step of decrypting.
`
`46. (Previously Presented) The method of claim 45, further comprising the step of
`
`computing a second decryption key, and wherein said step of decrypting comprises decrypting
`
`said encrypted information using said first and second decryption keys.
`
`47. (Previously Presented) The method of claim 46, wherein said first and second
`
`decryption keys are used to decrypt a video portion of said programming.
`
`48. (Previously Presented) The method of claim 45, further comprising the step of storing
`
`information evidencing said step of decrypting.
`
`49. (Previously Presented) The method of claim 45, further comprising the step of
`
`determining if said receiver station is decrypting said encrypted information correctly, and if not,
`
`communicating appearance-of-tampering information to a remote station.
`
`50. (Previously Presented) The method of claim 45, wherein said encrypted information
`
`includes television programming.
`
`4
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`APPLE EX. 1037
`Page 4
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`Docket No.: PMC-003C180
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`51. (Previously Presented) The method of claim 47, wherein a third decryption key is
`
`used to decrypt an audio portion of said programming, and said first decryption key is located
`
`based on decrypting said audio portion using said third decryption key.
`
`52. (Currently Amended) A method of decrypting programming at a receiver station,
`
`said method comprising the steps of:
`
`receiving an information transmission including encrypted information;
`
`detecting in said information transmission the presence of a first instruct-to-enable signal
`
`including first processor instructions;
`
`executing said first processor instructions of said first instruct-to-enable signal to provide
`
`a first decryption key;
`
`detecting in said information transmission the presence of a second instruct-to-enable
`
`signal including second processor instructions;
`
`executing said second processor instructions to provide a second decryption key;
`
`decrypting said encrypted information using said first and second decryption keys; and
`
`outputting said programming based on said step of decrypting.
`
`53. (Previously Presented) The method as in claim 52, further comprising the step of
`
`storing information evidencing said step of decrypting.
`
`54. (Previously Presented) The method as in claim 52, further comprising the step of
`
`determining if said receiver station is decrypting said encrypted information correctly, and if not,
`
`communicating appearance-of-tampering information to a remote station.
`
`55. (Previously Presented) The method of claim 52, wherein said first and second
`
`decryption keys are used to decrypt a video portion of said programming.
`
`56. (Previously Presented) The method of claim 52, wherein said encrypted information
`
`includes television programming.
`
`5
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`APPLE EX. 1037
`Page 5
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`Docket No.: PMC-003C180
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`57. (Previously Presented) The method of claim 55, wherein a third decryption key is
`
`used to decrypt an audio portion of said programming, and said first decryption key is provided
`
`based on decrypting said audio portion using said third decryption key.
`
`58. (Previously Presented) A method of decrypting programming at a receiver station,
`
`said method comprising the steps of:
`
`receiving an information transmission including encrypted information;
`
`detecting the presence of an instruct-to-enable signal;
`
`passing said instruct-to-enable signal to a processor;
`
`automatically tuning said receiver station to a channel designated by said instruct-to(cid:173)
`
`enable signal;
`
`receiving enabling information based on said step of tuning;
`
`decrypting said encrypted information by processing said enabling information; and
`
`outputting said programming based on said step of decrypting.
`
`59. (Previously Presented) The method of claim 58, further comprising the step of storing
`
`information evidencing said step of decrypting.
`
`60. (Previously Presented) The method of claim 58, further comprising the step of
`
`determining if said receiver station is decrypting said encrypted information correctly, and if not,
`
`communicating appearance-of-tampering to a remote station.
`
`61. (Previously Presented) The method of claim 58, wherein said enabling information is
`
`received in an audio portion of said programming.
`
`62. (Previously Presented) The method of claim 58, wherein said encrypted information
`
`includes television programming.
`
`63. (Previously Presented) The method of claim 61, wherein said step of decrypting
`
`comprises decrypting a video portion of said programming.
`
`6
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`APPLE EX. 1037
`Page 6
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`
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`Docket No.: PMC-003C180
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`REMARKS
`
`I.
`
`Status of claims
`
`Claims 33-63 are pending in this application. Amendments are proposed for Claims 45
`
`and 52. Applicants respectfully request reconsideration of the present application in view of the
`
`following remarks. An amendment submitted after a final office action in an application must
`
`comply with 37 C.P.R. § 1.116, which states that:
`
`( 1) An amendment may be made canceling claims or complying with any requirement of
`form expressly set forth in a previous Office action;
`(2) An amendment presenting rejected claims in better form for consideration on appeal
`may be admitted; or
`(3) An amendment touching the merits of the application or patent under
`reexamination may be admitted upon a showing of good and sufficient reasons
`why the amendment is necessary and was not earlier presented.
`
`37 C.P.R.§ 1.116(b).
`
`Applicants submit that this Amendment After Final Rejection and Request for
`
`Reconsideration places this application in condition for allowance by amending claims in
`
`manners that are believed to render all pending claims allowable over the cited art and/or at least
`
`place this application in better form for consideration on appeal under 37 C.P.R. § 1.116(b )(2).
`
`This Amendment is necessary because it at least clarifies and/or narrows the issues for
`
`consideration by the Board and was not earlier presented because Applicants believed that the
`
`prior response(s) placed this application in condition for allowance, for at least the reasons
`
`discussed in those responses. Moreover, pursuant to 37 C.P.R.§ 1.116(b)(3), this Amendment is
`
`necessary to address the Office Action's new rejections that were not previously presented
`
`during the prosecution of this application. Accordingly, entry of the present Amendment, as an
`
`earnest attempt to advance prosecution and/or to reduce the number of issues, is requested under
`
`37 C.P.R.§ 1.116.
`
`7
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`APPLE EX. 1037
`Page 7
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`Docket No.: PMC-003C180
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`Applicants earnestly solicit a favorable reconsideration and prompt allowance of the
`
`claims. Where the Office does not find that the claims are in condition for allowance, Applicants
`
`respectfully request that the Office withdraw the finality of the Office Action for the reasons set
`
`forth below.
`
`II.
`
`Double Patenting
`
`The Office Action provisionally rejected claims 33-63 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 the copending Application No. 08/474,145, which issued on August 2, 2011, as
`
`U.S. Patent. No. 7,992,169. In particular, the Action alleges that although the conflicting claims
`
`are not identical, they are patentably distinct from each other because the instant claims and the
`
`'169 claims are directed at the same invention with a different scope and that they are an obvious
`
`variant thereof or an obvious variation of the invention defined in the '169 claims. Applicants
`
`acknowledge that a timely filed terminal disclaimer in compliance with 37 C.P.R. 1.32l(c) or
`
`1.32l(d) may be necessary to overcome the provisional nonstatutory double patenting rejection.
`
`However, Applicants request that the requirement for filing the terminal disclaimer be held in
`
`abeyance, pending an indication of allowable subject matter from the Office in the present
`
`application. If filed, the terminal disclaimer will disclaim, in essential terms, the terminal part of
`
`the statutory term of any patent granted on the instant application, extending beyond the earliest
`
`expiration date of the '169 patent.
`
`III.
`
`The Prior Art Does not Anticipate Claims 45-50 and 52-56
`
`The Office Action rejected (i) claims 45-50 and 52-56 under 35 U.S.C. 102(e) as
`
`allegedly being anticipated by Mason, U.S. Patent No. 4,736,422; and (ii) claims 58, 59, and 61-
`
`8
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`APPLE EX. 1037
`Page 8
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`Docket No.: PMC-003C180
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`63 under 35 U.S.C. 102(e) as allegedly being anticipated by Pitts et al. ("Pitts"), U.S. Patent No.
`
`4,893,248. Applicants respectfully traverse the rejections for the following reasons.
`
`"A claim is anticipated only if each and every element as set forth in the claim is found,
`
`either expressly or inherently described, in a single prior art reference," Verdegaal Bros. v.
`
`Union Oil Co. of California, 814 F.2d 628,631,2 USPQ2d 1051, 1053 (Fed. Cir. 1987).
`
`Applicants respectfully submit that the cited art does not teach all the limitations of claims 45-50,
`
`52-56, 58, 59, and 61-63.
`
`A.
`
`Description of Prior Art - Mason
`
`Mason discloses "a conditional access system for transmitting and receiving scrambled
`
`television signals over-air includes means for addressing each of the receiving apparatus with an
`
`over-air signal whereby to permit reception and descrambling of the signal." The invention
`
`specifically describes "an over-air addressing DBS television encryption system."
`
`At a transmitter station, a session key S is generated and used to scramble an information
`
`signal A, a television signal. Col. 2, ll. 64-68. A second key Pis generated and used to scramble
`
`the session keyS. Col. 3, ll. 1-4. A third key D, the distribution key, is generated and used to
`
`scramble the second key P. Col. 3, ll. 8-10. The scrambled information signal A, the scrambled
`
`session key S, and the scrambled second key P are then transmitted to a receiver station. Col. 3,
`
`ll. 10-12.
`
`At the receiver station, a customer's individual distribution key D is used to "decrypt" the
`
`received scrambled second key P. Col. 3, ll. 13-18. The descrambled key Pis then used to
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`"decrypt" the received session keyS. Col. 3, ll. 19-20. The descrambled session keyS is used to
`
`"decrypt" the received information signal A. Col. 3, ll. 21-22.
`
`9
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`APPLE EX. 1037
`Page 9
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`Docket No.: PMC-003C180
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`B.
`
`Description of Prior Art - Pitts
`
`Pitts discloses "a system for monitoring and accumulating data indicative of viewer
`
`authorized pay per view TV programs at each of a plurality of remote terminals, wherein each
`
`remote terminal is coupled illustratively by non-dedicated telephone lines to a host computer at a
`
`central station." Col. 5, 11. 5-10. TV programs are transmitted via a coax cable in an encoded,
`
`scrambled, or encrypted manner to the receiver station. Col. 7, 11. 3-5.
`
`The receiver station receives a TV program signal embedded with a tag number. Col. 13,
`
`1. 18. The tag number identifies a particular pay per view program and its channel. Col. 13, 11.
`
`17-18. The receiver station processes the tag number and creates a command signal which
`
`causes the converter at the receiver station to descramble or decrypt the TV program signal. Col.
`
`13, 11. 21-26. The pay per view program is then output.
`
`C.
`
`Claims 45-50 and 52-56 Are Not Anticipated by Mason
`
`Applicants propose to amend the independent claim 45 to clarify that it claims detecting
`
`in the information transmission the presence of an instruct-to-enable signal. Applicants also
`
`propose to amend the independent claim 52 to clarify that it claims detecting in the information
`
`transmission the presence of the first instruct-to-enable signal and the second instruct-to-enable
`
`signal. No new matter is added by the proposed amendments. Applicants request entry of these
`
`amendments as they 1) are necessary under 37 C.P.R.§ 1.116(b)(3) to address the Office
`
`Action's new rejections under 35 U.S.C. 102(e) that were not previously presented; and 2) place
`
`this application in condition for allowance or at least place this application in better form for
`
`consideration on appeal under 37 C.P.R. § 1.116(b)(2).
`
`Claims 45-50 and 52-56 claim methods of decrypting programming at a receiver station.
`
`As mentioned in Applicants' Supplemental Amendment filed April 11, 2011, the Board of Patent
`
`10
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`APPLE EX. 1037
`Page 10
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`Docket No.: PMC-003C180
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`Appeals and Interferences decided in Ex parte Personalized Media Communications, LLC
`
`(Appeal2008-4228, Ex parte Reexamination Control 90/006,536) at pages 53-54, that encryption
`
`requires a digital signal. Claims 45-50 and 52-56 address digital signals. The Board also said
`
`that "encryption and decryption are not broad enough to read on scrambling and unscrambling."
`
`Although Mason uses the terms "encrypting" and "scrambling" interchangeably, the
`
`invention's scope is limited to an analog television system. Mason characterizes the invention as
`
`a Direct Broadcast Satellite ("DBS") system. Col. 2, ll. 12-13; Fig. 1. DBS systems were
`
`originally designed only to accommodate analog transmissions. Mason does not contemplate
`
`digital transmissions, therefore it does not address encryption. Its scope is limited to scrambling
`
`and unscrambling. Mason does not anticipate claims 45-50 and 52-56.
`
`Even assuming, arguendo, that Mason teaches the encryption and decryption of digital
`
`signals, claims 45-50 and 52-56 are not anticipated by Mason for at least the following reasons:
`
`1.
`
`Claim 45
`
`The Office Action points to Mason's Figure 1 having a decryption circuit 20 that utilizes
`
`a distribution key D as teaching the instruct-to-enable signal of claim 45. However, the
`
`Applicant's proposed amendment of claim 45 clarifies that the instruct-to-enable signal is
`
`detected in the information transmission. But, Mason's distribution key D generated at the
`
`transmitter station is not transmitted with the scrambled information signal A, the scrambled
`
`session keyS, and the scrambled second key P. Mason's receiver station uses a customer's
`
`individual distribution key D to decrypt the received scrambled second key P, not the transmitter
`
`station's distribution key D. Therefore the cited section of Mason does not teach this limitation
`
`of claim 45 as clarified by the proposed amendment.
`
`11
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`APPLE EX. 1037
`Page 11
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`Docket No.: PMC-003C180
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`Even if it were argued that Mason's scrambled second key P teaches the instruct -to(cid:173)
`
`enable signal, the scrambled session key S teaches the first decryption key, and the scrambled
`
`information signal A teaches the encrypted information, no other element of Mason further
`
`teaches the outputting of programming based on the step of decrypting the encrypted information
`
`using the first decryption key. Therefore, Mason fails to teach all the limitations of claim 45 as
`
`clarified by the proposed amendment.
`
`2.
`
`Claim 46
`
`Claim 46 claims the method of claim 45, "further comprising the step of computing a
`
`second decryption key, and wherein said step of decrypting comprises decrypting said encrypted
`
`information using said first and second decryption keys." Claim 46 is not rendered unpatentable
`
`by Mason for the same reasons as argued above in regard to claim 45. Further, Mason does not
`
`teach the limitation as set forth by claim 46. The Office Action points to the generation of the
`
`distribution key D at the transmitter station as teaching the second decryption key, but the
`
`distribution key D is not transmitted to the receiver station. It is not used to decrypt anything at
`
`the receiver station. It is the customer's individual distribution key D that is used at the receiver
`
`station to decrypt the second key P. Mason fails to teach a step of computing the customer's
`
`individual distribution key D. Therefore, Mason fails to teach all the limitations of claim 46.
`
`3.
`
`Claim 47
`
`Claim 4 7 claims the method of claim 46, "wherein said first and second decryption keys
`
`are used to decrypt a video portion of said programming." Claim 47 is not rendered unpatentable
`
`by Mason for the same reasons as argued above in regard to claims 45 and 46.
`
`12
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`APPLE EX. 1037
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`Docket No.: PMC-003C180
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`4.
`
`Claim 48
`
`Claim 48 claims the method of claim 45, "further comprising the step of storing
`
`information evidencing said step of decrypting." Claim 48 is not rendered unpatentable by
`
`Mason for the same reasons as argued above in regard to claim 45.
`
`5.
`
`Claim 49
`
`Claim 49 claims the method of claim 45, "further comprising the step of determining if
`
`said receiver station is decrypting said encrypted information correctly, and if not,
`
`communicating appearance-of-tampering information to a remote station." Claim 49 is not
`
`rendered unpatentable by Mason for the same reasons as argued above in regard to claim 45.
`
`6.
`
`Claim 50
`
`Claim 50 claims the method of claim 45, "wherein said encrypted information includes
`
`television programming." Claim 50 is not rendered unpatentable by Mason for the same reasons
`
`as argued above in regard to claim 45.
`
`7.
`
`Claim 52
`
`The Office Action points to Figure 1 having a decryption circuit 20 that utilizes a
`
`distribution key D as teaching the first instruct-to-enable signal including first processor
`
`instructions of claim 52. However, the Applicant's proposed amendment of claim 52 clarifies
`
`that the first instruct-to-enable signal is detected in the information transmission. Mason's
`
`distribution key D generated at the transmitter station is not transmitted with the scrambled
`
`information signal A, the scrambled session keyS, and the scrambled second key P. Mason's
`
`receiver station uses a customer's individual distribution key D to decrypt the received
`
`13
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`APPLE EX. 1037
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`Docket No.: PMC-003C180
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`scrambled second key P. Therefore the cited section of Mason does not teach this limitation of
`
`claim 52 as clarified by the proposed amendment.
`
`Even if it were argued that Mason's scrambled second key P teaches the first instruct-to(cid:173)
`
`enable signal, the scrambled session keyS teaches the second instruct-to-enable signal, and the
`
`scrambled information signal A teaches the encrypted information, no other element of Mason
`
`further teaches the outputting of programming based on the step of decrypting the encrypted
`
`information using the first and second instruct-to-enable signals. Moreover, Mason only teaches
`
`using scrambled session keyS to descramble the scrambled second key P, which is then used to
`
`descramble the scrambled information signal A. Mason does not teach decrypting information
`
`using first and second decryption keys together. Therefore, Mason fails to teach all the
`
`limitations of claim 52 as clarified by the proposed amendment.
`
`8.
`
`Claim 53
`
`Claim 53 claims the method of claim 52, "further comprising the step of storing
`
`information evidencing said step of decrypting." Claim 53 is not rendered unpatentable by
`
`Mason for the same reasons as argued above in regard to claim 52.
`
`9.
`
`Claim 54
`
`Claim 54 claims the method of claim 52, "further comprising the step of determining if
`
`said receiver station is decrypting said encrypted information correctly, and if not,
`
`communicating appearance-of-tampering information to a remote station." Claim 54 is not
`
`rendered unpatentable by Mason for the same reasons as argued above in regard to claim 52.
`
`14
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`Docket No.: PMC-003C180
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`10.
`
`Claim 55
`
`Claim 55 claims the method of claim 52, "wherein said first and second decryption keys
`
`are used to decrypt a video portion of said programming." Claim 55 is not rendered unpatentable
`
`by Mason for the same reasons as argued above in regard to claim 52.
`
`11.
`
`Claim 56
`
`Claim 56 claims the method of claim 52, "wherein said encrypted information includes
`
`television programming." Claim 56 is not rendered unpatentable by Mason for the same reasons
`
`as argued above in regard to claim 52.
`
`D.
`
`Claims 58, 59, and 61-63 Are Not Anticipated by Pitts
`
`1.
`
`Claim 58
`
`Claim 58 claims "receiving enabling information based on said step of tuning." The
`
`Office Action points to Pitt's receiver station sending "a command signal via the parallel
`
`input/output interface 26 and the data buffer 20" as teaching this limitation. Col. 13, 11. 23-24.
`
`But, as is evident from Fig. 1A, the control signal is generated by elements at the receiver
`
`station. The control signal is not received from a remote source. Therefore, Pitts fails to teach
`
`this limitation as set forth in claim 58.
`
`2.
`
`Claim 59
`
`Claim 59 claims the method of claim 58, "further comprising the step of storing
`
`information evidencing said step of decrypting." Claim 59 is not rendered unpatentable by Pitts
`
`for the same reasons as argued above in regard to claim 58.
`
`15
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`APPLE EX. 1037
`Page 15
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`
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`Docket No.: PMC-003C180
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`3.
`
`Claim 61
`
`Claim 61 claims the method of claim 58, "wherein said enabling information is received
`
`in an audio portion of said programming." As argued above, Pitts does not teach the receiving of
`
`enabling information, much less enabling information in audio portion of programming. Claim
`
`59 is not rendered unpatentable by Pitts for the same reasons as argued in regard to claim 58.
`
`4.
`
`Claim 62
`
`Claim 62 claims the method of claim 58, "wherein said encrypted information includes
`
`television programming." Claim 62 is not rendered unpatentable by Pitts for the same reasons as
`
`argued above in regard to claim 58.
`
`5.
`
`Claim 63
`
`Claim 63 claims the method of claim 61, "wherein said step of decrypting comprises
`
`decrypting a video portion of said programming." Claim 63 is not rendered unpatentable by Pitts
`
`for the same reasons as argued above in regard to claims 58 and 61.
`
`IV.
`
`Claims 60 Is Not Obvious
`
`The Office action rejected claim 60 under 35 U.S.C. 103(a) as allegedly being
`
`unpatentable over Pitts in view of Mason. Applicants respectfully traverse the rejection for the
`
`following reasons.
`
`The test that must be met for a reference or a combination of references to establish
`
`obviousness has not been satisfied in the instant matter. The MPEP states the proper test for
`
`obviousness includes making the following factual inquiries: (A) Determining the scope and
`
`contents of the prior art; (B) Ascertaining the differences between the prior art and the claims in
`
`issue; (C) Resolving the level of ordinary skill in the pertinent art; and (D) Evaluating evidence
`
`16
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`APPLE EX. 1037
`Page 16
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`
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`Docket No.: PMC-003C180
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`of secondary considerations. MPEP § 2141. The Office has erred substantively as to the factual
`
`findings.
`
`Claim 60 depends from claim 58. Claim 60 claims the method of claim 58, "further
`
`comprising the step of determining if said receiver station is decrypting said encrypted
`
`information correctly, and if not, communicating appearance-of-tampering to a remote station."
`
`As admitted by the Examiner, Pitts does not teach this limitation. Moreover, Claim 60 is not
`
`rendered unpatentable by Pitts for the same reasons as argued above in regard to claim 58.
`
`The Office Action argues that Mason makes up for Pitts deficiency because "Mason
`
`teaches a method of decryption in a broadcast television system, where there is detection of
`
`whether an encrypted block has been falsified and subsequent interrogation performed by the
`
`receiver as spoken of on column 6, lines 45-61." However, as argued above, Mason discloses an
`
`analog television system, therefore its scope is limited to scrambling and unscrambling. It would
`
`not have been obvious to apply the analog interrogation upon detection of falsified information
`
`as taught in Mason to the system of Pitts that is capable of processing digital television signals.
`
`Regardless, neither Pitts or Mason teaches all the limitations of claim 58. Mason does
`
`not address automatically tuning a receiver station to a channel designated by an instruct-to(cid:173)
`
`enable signal and receiving enabling information based on the step of tuning. Pitts does not
`
`address receiving enabling information based on a step of tuning. Therefore, even in
`
`combination, Pitts and Mason do not make obvious all the limitations of claim 60.
`
`17
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`APPLE EX. 1037
`Page 17
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`
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`Docket No.: PMC-003C180
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`V.
`
`Claims 33-44, 51, and 57 Are Allowable
`
`The Office Action identified claims 33-44 as allowable over the prior art of record. This
`
`Amendment does not affect claims 33-44. Applicants respectfully submit claims 33-44 as
`
`previously presented.
`
`The Office Action also identified claims 51 and 57 as objected to as being dependent
`
`upon a rejected base claim, but would be otherwise allowable if rewritten in independent form
`
`including all of the limitations of the base claim and any intervening claims. Applicants
`
`respectfully assert that the claims do not need to be rewritten.
`
`Claim 51 depends from claim 4 7, which depends from claim 46, which depends from
`
`independent claim 45. As argued above, claims 45-47 are allowable over Mason and the prior
`
`art of record. As identified by the examiner, the limitations of claim 51 are also allowable over
`
`the prior art of record. Applicants respectfully submit that claim 51 is allowable in its current
`
`dependent claim form.
`
`Claim 57 depends from claim 55, which depends from independent claim 52. As argued
`
`above, claims 52 and 55 are allowable over Mason and the prior art of record. As identified by
`
`the examiner, the limitations of claim 57 are also allowable over the prior art of record.
`
`Applicants respectfully submit that claim 57 is allowable in its current dependent claim form.
`
`VI.
`
`Conclusion
`
`Applicants respectfully submit that all claims are allowable over the cited art for the
`
`reasons set forth above. Applicants request reconsideration of this application in view of the
`
`amendment and arguments set forth above. In the event Applicants have overlooked the need for
`
`18
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`APPLE EX. 1037
`Page 18
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`
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`Docket No.: PMC-003C180
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`an extension of time, payment of fee, or additional payment of fee, Applicants hereby petition
`
`therefore and authorize that any charges be made to Deposit Account No. 50-4494.
`
`Should the Examiner have any questions regarding any of the above, the Examiner is
`
`respectfully requested to telephone the undersigned at 202-346-4000.
`
`Dated: October 3, 2011
`
`Respectfully submitted,
`
`By /Thomas J. Scott, Jr./
`
`Thomas J. Scott, Jr.
`Registration No.: 27,836
`GOODWIN PROCTER LLP
`901 New York Avenue, NW
`Washington, DC 20001
`(202) 346-4000
`Attorney for Applicants
`
`19
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`APPLE EX. 1037
`Page 19
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