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
`
`11/21/2011
`
`EXAMINER
`
`MOORE JR, MICHAEL J
`
`ART UNIT
`
`PAPER NUMBER
`
`2467
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`11/2112011
`
`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. 1038
`Page 1
`
`

`
`Advisory Action
`Before the Filing of an Appeal Brief
`
`Application No.
`
`08/485,507
`
`Examiner
`
`Applicant(s)
`
`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)
`THE REPLY FILED 03 October 2011 FAILS TO PLACE THIS APPLICATION IN CONDITION FOR ALLOWANCE.
`1. ~ The reply was filed after a final rejection, but prior to or on the same day as filing a Notice of Appeal. To avoid abandonment of
`this application, applicant must timely file one of the following replies: (1) an amendment, affidavit, or other evidence, which
`places the application in condition for allowance; (2) a Notice of Appeal (with appeal fee) in compliance with 37 CFR 41.31; or (3)
`a Request for Continued Examination (RCE) in compliance with 37 CFR 1.114. The reply must be filed within one of the following
`time periods:
`a) D The period for reply expires ___ months from the mailing date of the final rejection.
`b) [8] The period for reply expires on: (1) the mailing date of this Advisory Action, or (2) the date set forth in the final rejection, whichever is later. In
`no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of the final rejection.
`Examiner Note: If box 1 is checked, check either box (a) or (b). ONLY CHECK BOX (b) WHEN THE Fl RST REPLY WAS Fl LED WITHIN
`TWO MONTHS OF THE FINAL REJECTION. See MPEP 706.07(f).
`Extensions of time may be obtained under 37 CFR 1.136(a). The date on which the petition under 37 CFR 1.136(a) and the appropriate extension fee
`have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The appropriate extension fee
`under 37 CFR 1.17(a) is calculated from: (1) the expiration date of the shortened statutory period for reply originally set in the final Office action; or (2) as
`set forth in (b) above, if checked. Any reply received by the Office later than three months after the mailing date of the final rejection, even if timely filed,
`may reduce any earned patent term adjustment. See 37 CFR 1.704(b).
`NOTICE OF APPEAL
`2. D The Notice of Appeal was filed on __ . A brief in compliance with 37 CFR 41.37 must be filed within two months of the date of
`filing the Notice of Appeal (37 CFR 41.37(a)), or any extension thereof (37 CFR 41.37(e)), to avoid dismissal of the appeal. Since
`a Notice of Appeal has been filed, any reply must be filed within the time period set forth in 37 CFR 41.37(a).
`AMENDMENTS
`3. [8] The proposed amendment(s) filed after a final rejection, but prior to the date of filing a brief, will not be entered because
`(a) [8] They raise new issues that would require further consideration and/or search (see NOTE below);
`(b) D They raise the issue of new matter (see NOTE below);
`(c) [8] They are not deemed to place the application in better form for appeal by materially reducing or simplifying the issues for
`appeal; and/or
`(d) D They present additional claims without canceling a corresponding number of finally rejected claims.
`NOTE: See Continuation Sheet. (See 37 CFR 1.116 and 41.33(a)).
`4. D The amendments are not in compliance with 37 CFR 1.121. See attached Notice of Non-Compliant Amendment (PTOL-324).
`5. D Applicant's reply has overcome the following rejection(s): __ .
`6. D Newly proposed or amended claim(s) __ would be allowable if submitted in a separate, timely filed amendment canceling the
`non-allowable claim(s).
`7. [8] For purposes of appeal, the proposed amendment(s): a) ~ will not be entered, or b) D will be entered and an explanation of
`how the new or amended claims would be rejected is provided below or appended.
`The status of the claim(s) is (or will be) as follows:
`Claim(s) allowed: __ .
`Claim(s) objected to: __ .
`Claim(s) rejected: 33-63.
`Claim(s) withdrawn from consideration: __ .
`AFFIDAVIT OR OTHER EVIDENCE
`8. D The affidavit or other evidence filed after a final action, but before or on the date of filing a Notice of Appeal will not be entered
`because applicant failed to provide a showing of good and sufficient reasons why the affidavit or other evidence is necessary and
`was not earlier presented. See 37 CFR 1.116(e).
`9. D The affidavit or other evidence filed after the date of filing a Notice of Appeal, but prior to the date of filing a brief, will not be
`entered because the affidavit or other evidence failed to overcome §.[!rejections under appeal and/or appellant fails to provide a
`showing a good and sufficient reasons why it is necessary and was not earlier presented. See 37 CFR 41.33(d)(1 ).
`1 0. D The affidavit or other evidence is entered. An explanation of the status of the claims after entry is below or attached.
`REQUEST FOR RECONSIDERATION/OTHER
`11. ~ The request for reconsideration has been considered but does NOT place the application in condition for allowance because:
`See Continuation Sheet.
`12. D Note the attached Information Disclosure Statement(s). (PTO/SB/08) Paper No(s). __
`13. D Other: __ .
`
`U.S. Patent and Trademark Off1ce
`PTOL-303 (Rev. 08·06)
`
`Advisory Action Before the Filing of an Appeal Brief
`
`Part of Paper No. 20111109
`
`/Michael J. Moore, Jr./
`Primary Examiner, Art Unit 2467
`
`APPLE EX. 1038
`Page 2
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`

`
`Continuation Sheet (PT0-303)
`
`Application No. 08/485,507
`
`Continuation of 3. NOTE: The current amendments made by Applicant to claims 45 and 52 and claims depending therefrom raise new
`issues that require further consideration and/or search.
`
`Continuation of 11. does NOT place the application in condition for allowance because:
`Regarding claims 45-50 and 52-56, Applicant argues that while Mason (U.S. 4,736,422) uses the term encryption, it does not
`contemplate digital transmissions and does not address encryption. However, as shown in Figure 1 of Mason, the encryption system of
`Mason utilizes encryption keys that are processed via digital circuit components such as digital logic gates and comparators. Further,
`Figure 3a of Mason shows a 64 bit digital block encryption algorithm where bits of a signal are processed. Further, Figure 3b of Mason
`shows digital bit processing of a signal utilizing registers, switches, and digital logic gates. Therefore, it is maintained that Mason is
`applicable to digital transmissions as the digital circuitry shown would be used to encrypt/decrypt digital signals.
`Regarding claim 58, Applicant argues that Pitts et al. (U.S. 4,893,248) does not teach "receiving enabling information based on said
`step of tuning". Applicant further argues that the command signal sent via the parallel input/output interface 26 and the data buffer 20 of
`Pitts is not received from a remote source. However, the current claim language does not indicate who is receiving the "enabling
`information" or where the "enabling information" is being received from. As provided in the Final Office Action, Pitts teaches the sending of
`a command signal (enabling information) via the parallel input/output interface 26 and the data buffer 20 to cause the converter 14 to
`decrypt the inputted pay per view TV program signal with the corresponding embedded tag number (upon receiving the command signal)
`as spoken of on column 13, lines 21-39. This step is performed in response to the converter 14 receiving a TV program signal
`(information transmission including encrypted information) 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 60, Applicant again argues that Mason is not applicable to digital television signals. However, as provided above, it is
`maintained that Mason is applicable to digital television signals and therefore is applicable to the teachings of Pitts.
`
`2
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`APPLE EX. 1038
`Page 3