Skip to main content

Full text of "USPTO Patents Application 10667329"

See other formats


PATENT 

Attorney Docket: 57132.000008 



REMARKS 

These Remarks are responsive to the Office Action mailed June 1, 2007 ("Office 
Action"). Applicant respectfully requests reconsideration of the rejections of claims 1-18 for at 
least the following reasons, 

STATUS OF THE CLAIMS 

Claims 1-23 are pending in this application. Claims 19-23 have been withdrawn from 
consideration because of a restriction requirement, and claims 1-18 have been elected. Of the 
elected claims, claims 1, 7, and 13 are independent. No new claims have been added. 

Claims 1, 5, 7, 1 1-13, and 17 have been amended. 

Claims 2-4, 8-10, and 14-16 are canceled without prejudice or disclaimer. 

CLAIM OBJECTIONS FOR MINOR INFORMALITIES 

The Office Action objects to claims 1-6 because claim 1 contains a period in an improper 
location. Claim 1 has been amended to correct this typographical error. It is therefore 
respectfully requested that this objection be withdrawn. 

REJECTIONS UNDER 35 U.S.C. § 101 

The Office Action rejects claims 7-12 under 35 U.S.C. § 101 as being directed to non- 
statutory subject matter. In making this rejection, the Office Action asserts claims 7-12 recite 
software per se (Office Action, pg. 2). To overcome this rejection, the Office Action suggests 
amending the preamble of claim 7 to recite "A computer readable medium storing and executing 
a software application Applicant thanks the Examiner for this suggestion, and in an effort to 
expedite prosecution, claims 7, 1 1, and 12 have been amended in accordance with the 
Examiner's suggestion. It is therefore respectfully requested that this rejection be withdrawn. 



6 



PATENT 

Attorney Docket: 57132.000008 

REJECTIONS UNDER 35 U.S.C, S 103 

The Office Action rejects claims 1-18 under 35 U.S.C. 103(a) as being unpatentable over 
U.S. Pat. App. No. 2002/0106086 Al to Kamiya et al. ("Kamiya") in view of U.S. Pat. No. 
5,872,846 to Ichikawa ("Ichikawa"). Claims 2-4, 8-10, and 14-16 are canceled without prejudice 
or disclaimer. Claims 1 , 7, and 13 have been amended to more clearly recite the subject matter 
being claimed. Applicant respectfully submits that claims 1, 5-7, 1 1-13, 17, and 1 8 are allowable 
for at least the following reasons. 

A. The Cited Combination Fails to Disclose Each and Every Limitation of the 
Independent Claims 

To establish prima facie obviousness of a claimed invention, all of the claim limitations 
must be taught or suggested by the prior art. In re Royka, 490 F.2d 981 (CCPA 1974); MPEP § 
2 143 .03. Claim 1 has been amended to recite packetizing said collected data into at least two 
sets of data packets, wherein a first set of data packets comprises encrypted data and a second 
set of data packets comprises a key for decoding said encrypted data. This amendment renders 
the previous rejection moot. 

As applied to amended claim 1 , Kamiya and Ichikawa — when taken alone or in 
combination— do not teach or suggest the recitation of selecting and addressing a second set of 
data packets for transmission via a satellite delivery system and/or transmitting said second set 
of data packets via said satellite delivery system. The Office Action acknowledges that 
"Kamiya et al. fails to explicitly disclose the portions of data being transmitted in a second 
transmission channel that is a satellite transmission channel." (Office Action, pg, 4). The 
Office Action relies on Ichikawa to cure this deficiency. Specifically, the Office Action refers to 
the Ichikawa teaching of sending key information over a satellite transmission channel (Office 
Action, pg. 4). The combination of Kamiya and Ichikawa is deficient with respect to claim 1 for 
at least the following reasons. 

Kamiya describes dividing key information into multiple pieces and then delivering those 
multiple pieces to a given destination via multiple different delivery routes. (See e.g., Kamiya 
abstract and para. [0007]). Ichikawa discloses transmitting key information over a satellite link. 
(Ichikawa col. 2, lines 24-26). Importing the Ichikawa teachings into the Kamiya disclosure 
results in a system where key information is divided into multiple pieces and delivered to a given 
destination over multiple delivery routes — with one of those delivery routes being a satellite 



7 



Application No. 10/667,329 



Attorney Docket No. 57132.000008 



delivery system. In other words, the combination of Kamiya and Ichikawa simply adds satellite 
delivery as an additional route to the existing "multiple delivery routes" recited in Kamiya. 

Claim 1, inter alia, recites transmitting said second set of data packets via said satellite 
delivery system. The claim further recites that a second set of data packets comprises a key for 
decoding said encrypted data. Thus, the claim requires sending the key — in its entirety — over 
the single route of a satellite delivery system. The combination of Kamiya and Ichikawa does 
not send the key — in its entirety — over the single route of a satellite delivery system. In stark 
contrast to this requirement, the proposed combination divides the key information and sends it 
over multiple different routes. Accordingly, the combination does not teach or suggest the 
claimed recitation of selecting and addressing a second set of data packets for transmission via 
a satellite delivery system, and/or transmitting said second set of data packets via said satellite 
delivery system. 

Because the cited combination fails to disclose all of the limitations of claim 1, a 
rejection under 35 U.S.C § 103 is improper and should be withdrawn. Applicant respectfully 
submits that claim 1 is in condition for allowance. 

Independent claims 7 and 13 have been amended in a manner similar to claim 1 and the 
above arguments apply with equal force to both of these claims. These claims are allowable for 
similar reasons. 

Claims 5, 6, 1 1, 12, 17, and 18 depend directly or indirectly from independent claims 1, 
7, or 13. These claims are allowable as being dependent on an allowable claim. 

B. The Combination of Kamiya and Ichikawa is Improper Because Kamiya's Use of 
Multiple Routes to Deliver Key Information is Incompatible With a System That 
Delivers Key Information Over a Single Route 

A prima facie case of obviousness based upon a combination of prior art elements 
requires a showing of the reasons why a person having ordinary skill in the art would have 
combined the prior art elements in the manner claimed. KSR Int V Co. v. Teleflex, Inc., No. 04- 
1350 (U.S.Apr. 30, 2007). 

Kamiya teaches that key information should be delivered in multiple pieces over a 
plurality of routes. The abstract of Kamiya states that "[M]ultiple pieces of key information are 



8 



Application No. 10/667,329 



Attorney Docket No. 57132.000008 



delivered over routes which . . . differ from each other." This idea is pervasive throughout 
Kamiya. 

Kamiya divides the key information into multiple pieces and delivers the multiple pieces 
over multiple different routes to prevent unauthorized copying of encrypted content that can only 
be accessed with the key. (See e.g., Kamiya para. [0007]). Kamiya explains that "[When] the 
key information is delivered in multiple pieces over a plurality of routes, the unauthorized 
appropriation of one piece of key information will not compromise the corresponding content 
data . . ." (Kamiya para. [0007]). 

Consistent with this idea, Kamiya discloses the following methods for delivering key 
information to the destination: (1) Transmitting the key information over different routes on the 
internet {See e.g. Kamiya paras. [0032], [0163]), (2) Transmitting the key information over the 
internet and on a storage medium {See e.g. Kamiya paras. [0046], [0095]), or (3) Transmitting 
the key information on two different storage mediums {See e.g. Kamiya paras. [0047], [0160]). 

Ichikawa is cited for transmitting key information over a satellite delivery system. 
Ichikawa does not disclose transmitting the key information over multiple routes. Thus, an 
adoption of Ichikawa 's teachings by Kamiya would be contrary to the teachings of Kamiya 
because Kamiya would be forced to transmit the key information over a single route. 

1- Kamiya Teaches Away From the Claimed Invention 

As to independent claims 1, 7, and 13, combining Kamiya and Ichikawa to arrive at the 
claimed invention is improper because Kamiya teaches away from the claimed invention. There 
is no reason to combine references if one of the references teaches away from its combination 
with another source. See Tech Air, Inc. v. Denso Mfg. Michigan Inc., 192 F.3d 1353 (Fed. Cir. 
1999). A reference teaches away when a person of ordinary skill, upon reading the reference, (1) 
would be discouraged from following the path set out in the reference, or (2) would be led in a 
direction divergent from the path that was taken by the applicant. Id. The Supreme Court 
recently affirmed this principle by stating that "[W]hen the prior art teaches away from 
combining certain known elements, discovery of a successful means of combining them is more 
likely to be nonobvious." KSR Int'l Co. at 12. 



9 



Application No. 10/667,329 



Attorney Docket No. 57132.000008 



Here, Kamiya teaches away from a combination with Ichikawa. Kamiya relates to 
dividing key information into multiple pieces and transmitting those pieces over different 
routes 8 . Ichikawa discloses transmitting key information over a single route. A person having 
ordinary skill in the art, upon reading the advantages described in Kamiya of delivering the key 
via different routes, would be discouraged from following the teachings of any reference that 
transmits the key as a single entity over a single route. 

Kamiya further teaches away from a combination with Ichikawa because a person having 
ordinary skill in the art, upon reading Kamiya, would be led to design a system where the key 
information is sent to the destination over multiple routes. Such a system differs substantially 
from the claimed invention, which requires that a second set of data packets be transmitted over 
a single route on a satellite delivery system. 

Claims 5, 6, 11, 12, 17, and 18 depend directly or indirectly from the independent claims 
argued above. They are allowable for similar reasons. 

2. The Proposed Modification to Kamiya Changes its Principle of Operation 

Further regarding independent claims 1 , 7, and 13, the proposed modification to Kamiya 
is improper because it changes Kamiya' s principle of operation. If a proposed modification or 
combination of the prior art would change the principle of operation of the prior art invention 
being modified, then the teachings of the reference are not sufficient to render the claims prima 
facie obvious. In re Ratti, 270 F.2d 810 (CCPA 1959); MPEP § 2143.01(VI). 

The Office Action proposes a modification to Kamiya that is contrary to the general 
theme and principle operation of Kamiya. As noted above, Kamiya breaks up key information 
into multiple partial keys and then delivers these partial keys to the destination over several 
different routes. This multi-route delivery system helps prevent unauthorized copying of 
encrypted data by making it harder to get all of the pieces of key information necessary to 
decrypt the content data. 

To arrive at the invention of claim 1, 7, or 13, Kamiya would have to be modified such 
that the key information was sent over a single route. The principle operation of Kamiya is to 

1 Several of these embodiments are described above in Section (B)(1) of this correspondence. 



10 



Application No. 10/667,329 



Attorney Docket No. 57132.000008 



send the key information over multiple routes, not a single route. The proposed modification 
changes the principle operation of Kamiya by preventing Kamiya from sending the key 
information over multiple routes. Accordingly, the proposed modification is improper and 
should be withdrawn. 

Claims 5, 6, 1 1, 12, 17, and 1 8 depend directly or indirectly from the independent claims 
argued above. They are allowable for similar reasons. 

3. The Proposed Modification to Kamiya Renders Kamiya Inoperable for Its 
Intended Purpose 

Further regarding independent claims 1, 7, and 13, the proposed modification to Kamiya 
is improper because it renders Kamiya inoperable for its intended purpose. If the teachings of a 
prior art reference would lead one skilled in the art to make a modification which would render 
another prior art device inoperable, then such a modification would generally not be obvious to 
one of ordinary skill in the art. In re Kramer, 925 F.2d 1479 (Fed. Cir. 1991) (citing In re 
Gordon, 733 F.2d 900 (Fed. Cir. 1994)); MPEP § 2143.01(V). 

The Office Action proposes a modification to Kamiya that would render Kamiya 
inoperable for its intended purpose. As noted above, Kamiya breaks up key information into 
multiple partial keys and then delivers these partial keys to the destination over several different 
routes. The intended purpose of this multi-route delivery system is to prevent unauthorized 
copying of encrypted data by making it harder for an unauthorized party to get all of the pieces 
of key information necessary to decrypt the content data. 

To arrive at the invention of claim 1, Kamiya would have to be modified such that the 
key information is sent over a single, satellite delivery route instead of being sent over multiple 
routes. The intended purpose of Kamiya is sending the key information over multiple routes to 
avoid unauthorized decryption. The proposed modification renders Kamiya inoperable because 
it forces Kamiya to send the key information over a single route and thus thwarts Kamiya's 
intended purpose of using multiple routes to prevent unauthorized decryption. Consequently, the 
proposed modification is improper and should be withdrawn. 

Claims 5, 6, 11, 12, 17, and 18 depend directly or indirectly from the independent claims 
argued above. They are allowable for similar reasons. 



11 



Application No. 10/667,329 



Attorney Docket No. 57132.000008 



CONCLUSION 



Applicant respectfully submits that the application is in condition for allowance and 
respectfully request a notice of allowance for the pending claims. Should the Examiner 
determine that any further action is necessary to place this application in condition for allowance, 
the Examiner is kindly requested and encouraged to telephone Applicant's undersigned 
representative at the number listed below. 

It is believed that no fees are due in connection with this response. However, if any fees 
are determined to be due, the Commissioner is hereby authorized to charge these fees to the 
undersigned's Deposit Account No. 50-0206. 



Intellectual Property Department 
1900 K Street, N.W. Suite 1200 
Washington, DC 20006-1109 
(202) 955-1500 (telephone) 
(202) 778-2201 (facsimile) 



Respectfully submitted, 



Hunton & Williams LLP 





12