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United States Patent and Trademark Office 



UNITED STATES DEPARTMENT OF COMMERCE 
I nilid Stall-, Patent and Trademark Office 

Address: COMMISSIONER FOR PATENTS 



APPLICATION NO. 



FILING DATE 



FIRST NAMED INVENTOR 



ATTORNEY DOCKET NO. CONFIRMATION NO. 



10/607.329 



0V/2.V2003 



21967 7590 04/01/2009 

HUNTON & WILLIAMS LLP 
INTELLECTUAL PROPERTY DEPARTMENT 
1900 K STREET, N.W. 
SUITE 1200 

WASHINGTON, DC 20006-1 109 



SHIFERAW, ELENI A 



PAPER NUMBER 



DELIVERY MODE 



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. 



PTOL-90A (Rev. 04/07) 



l/ffflrC? nVrliUli Otfff Iff ids y 


Application No. 

10/667,329 


Applicant(s) 

HANE, JOHN 


Examiner 

ELENI A. SHIFERAW 


Art Unit 

2436 





- The MAILING DATE of this communication appears on the cover sheet with the correspondence address — 
Period for Reply 



A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 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 )KI Responsive to communication(s) filed on 26 January 2009 . 
2a )□ This action is FINAL. 2b)^ This action is non-final. 

3) D 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 CD. 11, 453 O.G. 213. 

Disposition of Claims 

4) |EI Claim(s) 1,5-7, 1 1-13,17, 18 and 24-26 is/are pending in the application. 

4a) Of the above claim(s) is/are withdrawn from consideration. 

5) D Claim(s) is/are allowed. 

6) E3 Claim(s) 1.5-7.11-13.17.18 and 24-26 is/are rejected. 

7) 0 Claim(s) is/are objected to. 

8) D Claim(s) are subject to restriction and/or election requirement. 

Application Papers 

9) D The specification is objected to by the Examiner. 

10) D The drawing(s) filed on is/are: a)D accepted or b)D 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). 

1 1) D The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152. 

Priority under 35 U.S.C. § 119 

12) D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f). 
a)D All b)D Some * c)D None of: 

1 .□ Certified copies of the priority documents have been received. 

20 Certified copies of the priority documents have been received in Application No. . 

3.Q 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. 



Attach ment(s) 

1) D Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-41 3) 

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) Paper No(s)/Mail Date. . 

3) □ Information Disclosure Statement(s) (PTO/SB/08) 5 ) □ Notice of Informal Patent Application 

Paper No(s)/Mail Date . 6) □ Other: . 



PTOL-T26 d (Rev e 08-06r 



Office Action Summary 



Part of Paper No./Mail Date 20090329 



Application/Control Number: 10/667,329 
Art Unit: 2436 



Page 2 



DETAILED ACTION 



Status of Claims 



1. 



Claims 1, 5-7, 11-13, 17-18 and 24-26 are pending. 



2. 



Claims 19-23 are withdrawn. 



Response to Arguments and amendments 



3. Applicant's arguments and amendments filed on 01/26/2009 are fully considered but are 
not persuasive. 

Regarding argument "the office bears the burden of establishing a prima facie case of 
obviousness ... a claimed invention combining multiple known elements is not rendered obvious 
simply because each element was known independently in the prior art. . .. rather must still be 
some reason that would have prompted a person ordinary skill in the art to combine the 
elements. . ." remark page 10-11, argument is not persuasive because sufficient and reasonable 
motivation to combine the applied references is provided. 

Regarding argument Kikinis failure to disclose, or even suggest, a method for requesting 
and securely receiving data from the Internet comprising "selecting and addressing said second 
set of data packets for transmission at a second transmission time via a satellite delivery system, 
wherein the second transmission time is different from the first transmission time, and 
automatically attaching a second address to said second set of data packets," remark page 1 1 
par. 2, as recited in claim 1, argument is not persuasive because: First, one cannot show 
nonobviousness by attacking references individually where the rejections are based on 
combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re 



Application/Control Number: 10/667,329 Page 3 

Art Unit: 2436 

Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Second, Kikinis discloses a data 
delivery system, comprising a server connected to data sources and adapted to transmit data to a 
user; a first link from the server adapted to transmit data to the user via a first delivery 
path; a second link from the server adapted to transmit data via a second delivery path to 

the user,. . . . For each data entity to be transmitted to the user, the transmission control routines 
select either the first path or the second path for transmission, based on size of the data 
entity and preprogrammed criteria. In a preferred embodiment the first path is a land-based 
path, and the second path is a satellite transmission path (see col. 2 lines 54-67). Kikinis on col. 
3 lines 47-57 discloses the land-based path being land based internet connection through a 
public-switched telephone network. Kikinis further discloses encrypting the data and 
transmitting a deciphering key to user by a separate path than the encrypted data is sent (see col. 
3 lines 7-9). Kikinis appropriately prepares encrypted data packet and key packet and delivers 
to requesting user device address (see col. 6 lines 28-47). If the encrypted data packet and key 
packet did not have address information attached to, they wouldn't have been delivered to the 
requesting user device. The applicant agrees that the encrypted data is delivered via different 
transmission path (remark page 1 1), if the data packets are not attaching address, they would not 
know which path to go to. Transmitting an encrypted content data packet with first address over 
a first path and transmitting a key that is used to encrypt the content and has a second address 
via a different path with a transmission time that is different from the first eg. in hours or days 
apart, is disclosed by Kamiya et al. (see par. 0023-0025 and 0006-0012). 

Regarding argument Kikinis failure to teach "packetizing said collected data into at least 
two sets of data packets, wherein a first set of data packets comprises encrypted data and a 



Application/Control Number: 10/667,329 Page 4 

Art Unit: 2436 

second set of data packets comprises a key for decoding said encrypted data," remark page 12 
par. 1, argument is not persuasive because Kikinis clearly discloses preparing and transmitting 
encrypted data and deciphering key separately (see col. 6 lines 30-47, col. 5 lines 7-16, col. 2 
lines 54-67 and col. 3 lines 47-57). 

Regarding argument Kikinis failure to disclose or mention "the key is transmitted via a 
satellite system to user" remark page 12 par. 2, argument is not persuasive because Kikinis 
teaches latency period (time it takes to get to user) and decides either of the path internet land 
based or satellite path (see col. 6 lines 16-47, col. 2 lines 54-65, col. 3 lines 7-9 and col. 5 lines 
7-16, decryption key). It is clear that the key is delivered in either path since Kikinis teaches 
transmitting encrypted data and decryption key in a separate path based on the determination 
method (see col. 3 lines 7-9). 

Regarding argument Kamaya teaches away from Kikinis and would not have been 
obvious to combine the two references, remark page 13 par. 1, argument is not persuasive 
because they are analogous in secure data transmission system in two different channels and/or 
encrypted data is transmitted via a first channel and a key used to encrypted the data is 
transmitted via in a different channel and sufficient motivation to combine is properly provided. 

Regarding argument Kamaya delivering content data and key in a different times unlike 
to Kikinis that transmits in two different channels and would not have been obvious remark page 
13 last par. -page 14 par. 1st, argument is not persuasive because as originally cited by the office 
Kamaya is not only transmitting encrypted data and keys in different times but also delivering 
key via downstream system i.e. routes different from those that carry the encrypted digital data 



Application/Control Number: 10/667,329 Page 5 

Art Unit: 2436 

or content. All delivery routes are made different or separate from one other either physically or 
temporally (see par. 0007 and 0025-0026). Therefore it would have been obvious. 

Regarding argument it would not have been obvious to combine the references because 
Kikinis teaches internet and satellite delivery and Kamaya discloses high speed multipoint 
delivery system..., argument is not persuasive because Kamaya teaches transmitting key via a 
separate routing channel for securely providing data to users and Kikinis also discloses 
transmitting a key via a different channel than the data sent to securely provide data to users. 
Therefore it would have been obvious. 

Regarding argument the reference failure to teach "selecting and addressing said first set 
of data packets for transmission at a first transmission time via a first channel of a transmission 
mode at a first frequency," remark page 15-16, argument is not persuasive because: First, one 
cannot show nonobviousness by attacking references individually where the rejections are based 
on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); 
In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Second, Kikinis discloses a 
data delivery system, comprising a server connected to data sources and adapted to transmit 
data to a user; a first link from the server adapted to transmit data to the user via a first 
delivery path; a second link from the server adapted to transmit data via a second delivery 
path to the user,. . . . For each data entity to be transmitted to the user, the transmission control 
routines select either the first path or the second path for transmission, based on size of the 
data entity and preprogrammed criteria. In a preferred embodiment the first path is a land- 
based path, and the second path is a satellite transmission path (see col. 2 lines 54-67). Kikinis 
on col. 3 lines 47-57 discloses the land-based path being land based internet connection through 



Application/Control Number: 10/667,329 Page 6 

Art Unit: 2436 

a public-switched telephone network. Kikinis further discloses encrypting the data and 
transmitting a deciphering key to user by a separate path than the encrypted data is sent (see col. 
3 lines 7-9). Kikinis appropriately prepares encrypted data packet and key packet and delivers 
to requesting user device address (see col. 6 lines 28-47). If the encrypted data packet and key 
packet did not have address information attached to, they wouldn't have been delivered to the 
requesting user device. The applicant agrees that the encrypted data is delivered via different 
transmission path (remark page 1 1), if the data packets are not attaching address, they would not 
know which path to go to. Transmitting an encrypted content data packet with first address over 
a first path and transmitting a key that is used to encrypt the content and has a second address 
via a different path with a transmission time that is different from the first eg. in hours or days 
apart, is disclosed by Kamiya et al. (see par. 0023-0025 and 0006-0012). 

Claim Rejections - 35 USC § 103 

4. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all 
obviousness rejections set forth in this Office action: 

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in 
section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are 
such that the subject matter as a whole would have been obvious at the time the invention was made to a person 
having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the 
manner in which the invention was made. 

5. Claims 1, 5-7, 11-13, 17-18 and 23-26 are rejected under 35 U.S.C. 103(a) as being 
unpatentable over Kikinis (US Patent 6,289,389) in view of Kamiya et al. 2002/0106086 Al. 

Regarding claims 1, 7, and 13, Kikinis teaches 



Application/Control Number: 10/667,329 Page 7 

Art Unit: 2436 

o a method for requesting and securely receiving data from the Internet (col. 2 lines 

54-67 and fig. 3), said method comprising the steps of: 
o receiving a request for data (col. 1, lines 5-10, data requested by a user); 
o collecting data in response to said request (col. 1, lines 5-10, data gathering 

site); 

o packetizing said collected data into at least two sets_of data packets (col. 6, lines 

30-47, encrypted data and decryption key), 
o wherein a first set of data packets comprises encrypted data_(col. 6, lines 30-47, 

encrypted data) and a second set of data packets comprises a key for decoding 

said encrypted data (col. 6 lines 16-47, col. 2 lines 54-65, col. 3 lines 7-9 and col. 

5 lines 7-16, decryption key); 
o selecting and addressing a first set of data packets for transmission via the 

Internet, and automatically attaching a first address to said first set of data packets 

(see col. 3 lines 46-56, col. 3 lines 7-9 and col. 6, lines 30-47, through modem); 
o selecting and addressing a second set of data packets for transmission via a 

satellite delivery system and automatically attaching a second address to said 

second set of data packet (see col. 3 lines 46-56, col. 3 lines 7-9, and col. 6, lines 

30-47, through digital link to satellite); 
o transmitting said first set of data packets via the Internet (col. 6, lines 30-47 and 

col. 3 lines 46-56, through modem/internet connection through a public 

switched telephone network); and 



Application/Control Number: 10/667,329 Page 8 

Art Unit: 2436 

o transmitting said second set of data packets via said satellite delivery system (col. 
6, lines 30-47, through digital link to satellite). 

o Kikinis fails to explicitly disclose first data packets for transmission at a first 
transmission time and a second set of data packets for transmission at a second 
transmission time wherein the second transmission time is different from the first 
transmission time. 

o However transmitting an encrypted content data packet with first address over a 
first path and transmitting a key that is used to encrypt the content and has a 
second address via a different path with a transmission time that is different from 
the first eg. in hours or days apart, is disclosed by Kamiya et al. (see par. 0023- 
0025 and 0006-0012). Therefore it would have been obvious to one having 
ordinary skill in the art at the time of the invention was made to employ the 
teachings within the system of Kikinis because they are analogous in secure 
content distribution in multiple channel. One would have been obvious to do so 
because it would prevent hackers from intercepting the transmitted data and find 
all the information (key and content) in one single interception and retrieve data 
and would make it difficult to hackers to intrude transmitted data. 

Regarding claims 24, 25 and 26 Kikinis discloses a method for requesting and securely 
receiving data from the Internet (col. 2 lines 54-67 and fig. 3), said method comprising the steps 
of: 

receiving a request for data (col. 1, lines 5-10 and fig. 3, data requested by a user); 
collecting data in response to said request (col. 1, lines 5-10, data gathering site); 



Application/Control Number: 10/667,329 Page 9 

Art Unit: 2436 

packetizing said collected data into at least two sets of data packets (col. 6, lines 30-47, 
encrypted data and decryption key); 

wherein a first set of data packets comprises encrypted data (col. 6, lines 30-47, 
encrypted data) and a second set of data packets comprises a key for decoding said 
encrypted data (col. 6, lines 30-47, decryption key) selecting and addressing said first set 
of data packets for transmission via a first channel of a transmission mode at a first 
frequency, and automatically attaching a first address to said first set of data packets (see 
col. 3 lines 46-56, col. 3 lines 7-9, and col. 6, lines 30-47, through modem); 

selecting and addressing said second set of data packets for transmission via a second 
channel of the transmission mode at a second frequency, wherein the second frequency is 
different from the first frequency (see col. 3 lines 46-56, col. 3 lines 7-9, and col. 6, lines 
30-47, through digital link to satellite); 

transmitting said first set of data packets via said first channel (col. 6, lines 30-47, 
through modem); and 

transmitting said second set of data packets via said second channel (col. 6, lines 30-47, 
through digital link to satellite). 

o Kikinis fails to disclose first data packets for transmission at a first transmission 
time and a second set of data packets for transmission at a second transmission 
time wherein the second transmission time is different from the first transmission 
time. 



Application/Control Number: 10/667,329 Page 10 

Art Unit: 2436 

o However transmitting a encrypted content data packet with first address over a 
first path via a first channel of a transmission mode and transmitting a key that is 
used to encrypt the content and has a second address via a different path channel 
of the transmission mode with a transmission time that is different from the first 
eg. in hours or days apart, is disclosed by Kamiya et al. (see par. 0023-0025 and 
0006-0012). Therefore it would have been obvious to one having ordinary skill in 
the art at the time of the invention was made to employ the teachings within the 
system of Kikinis because they are analogous in secure content distribution in 
different transmission channel. One would have been obvious to do so because it 
would prevent hackers from intercepting the transmitted data and find all the 
information (key and content) in one single interception and retrieve data and 
would make it difficult to hackers to intrude transmitted data. 

Regarding claims 5, 11, and 17, Kikinis teaches wherein said satellite delivery system is 
comprised of a network processing center with an associated provider antenna and at least one 
subscriber terminal with an associated subscriber antenna (fig. 1, 23, 45). 

Regarding claims 6, 12, and 18, Kikinis teaches wherein said satellite delivery system 
further comprises a satellite (fig. 1, 37). 

Conclusion 

6. Examiner's Note: Examiner has cited particular columns and line numbers in the 
references as applied to the claims below for the convenience of the applicant. Although the 



Application/Control Number: 10/667,329 Page 1 1 

Art Unit: 2436 

specified citations are representative of the teachings in the art and are applied to the specific 
limitations within the individual claim, other passages and figures may apply as well. It is 
respectfully requested that the applicant, in preparing the responses, fully consider the references 
in entirety as potentially teaching all or part of the claimed invention, as well as the context of 
the passage as taught by the prior art or disclosed by the examiner. 

7. Any inquiry concerning this communication or earlier communications from the 
examiner should be directed to ELENI A. SHIFERAW whose telephone number is (571)272- 
3867. The examiner can normally be reached on Mon-Fri 8:00am-5:00pm. 

If attempts to reach the examiner by telephone are unsuccessful, the examiner's 
supervisor, Nasser R. Moazzami can be reached on (571) 272-4195. The fax phone number for 
the organization where this application or proceeding is assigned is 571-273-8300. 

Information regarding the status of an application may be obtained from the Patent 
Application Information Retrieval (PAIR) system. Status information for published applications 
may be obtained from either Private PAIR or Public PAIR. Status information for unpublished 
applications is available through Private PAIR only. For more information about the PAIR 
system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR 
system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would 
like assistance from a USPTO Customer Service Representative or access to the automated 
information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. 



Application/Control Number: 10/667,329 Page 12 

Art Unit: 2436 

/Eleni A Shiferaw/ 
Examiner, Art Unit 2436