Kenneth L. Levy et al.

Patent Trials and Appeals Board

Nov 18, 2019

11932839 - (D) (P.T.A.B. Nov. 18, 2019)

UNITED STATES PATENT 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.
11/932,839 10/31/2007 Kenneth L. Levy 098888-2031 2952
99103 7590 11/18/2019
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
MANDEL, MONICA A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
11/18/2019 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KENNETH L. LEVY and GEOFFREY B. RHOADS
___________

Appeal 2018-006159
Application 11/932,839
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, DENISE M. POTHIER, and
BETH Z. SHAW, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 17–36 and 38–40, which constitute all the claims
pending in this application. Claims 1–16 and 37 are canceled. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We reverse.

1 We use the word Appellant to refer to Applicant as defined in 37 C.F.R.
§ 1.42(a). According to Appellant, the real party in interest is “DIGIMARC
CORPORATION (AN OREGON CORPORATION).” Appeal Br. 2.
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STATEMENT OF THE CASE 2
Disclosed embodiments of Appellant’s invention “relate[] to linking
audio and other multimedia data objects with metadata and actions via a
communication network, e.g., computer, broadcast, wireless, etc.” Spec. 1,
ll. 16–18.
Illustrative Claim
17. A method comprising:

receiving a content signal at a server via a network;

computing a fingerprint from audio or visual content
within the content signal,

wherein the fingerprint is derived from a portion of the
audio or visual content;

assigning an object ID to the fingerprint to associate an
object ID with the content signal;

storing an association between the object ID and metadata
in a database to link the metadata with the content signal;

receiving a query comprising a first audio or visual portion
of the content signal and context information, wherein the
context information comprises a type of distribution of the
content signal;

[L1] extracting the fingerprint from the first audio or
visual portion of the content signal;
[L2] determining a watermark decoder based upon the
fingerprint;

2 We herein refer to the Final Office Action, mailed May 10, 2017 (“Final
Act.”); Appeal Brief, filed Nov. 13, 2017 (“Appeal Br.”); Examiner’s
Answer, mailed Mar. 27, 2018 (“Ans.”); and the Reply Brief, filed May 29,
2018 (“Reply Br.”).
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determining, using the watermark decoder, the object ID
for the content signal;

logging a transaction record comprising the fingerprint
and the context information; and

obtaining the metadata associated with the object ID
from the database the metadata comprising an age
appropriateness indicator and rules for rendering the
content signal.
Appeal Br. 21–22 (Claims Appendix) (emphasis added regarding the
disputed limitations L1 and L2 under 35 U.S.C. § 103(a)).

Rejections3
A. Claims 17–20, 24–31, 35, 36, 38, and 40 are rejected under pre-
AIA 35 U.S.C. § 103(a) as being obvious over the combined
teachings and suggestions of Rhoads (US 6,122,403, iss. Sept.
19, 2000), in view of King et al. (US 6,477,707 B1, iss. Nov. 5,
2002) (“King”), and further in view of Jones et al. (US
6,304,523 B1, iss. Oct. 16, 2001) (“Jones”).
B. Claims 21–23 and 32–34 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over the combined teachings and
suggestions of Rhoads, King, and Jones, and further in view of
Oka et al. (US 6,615,252 B1, iss. Sept. 2, 2003) (“Oka”).
C. Claim 39 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
obvious over the combined teachings and suggestions of
Rhoads, King, and Jones, and further in view of Hoffert et al.
(US 6,370,543 B2, iss. Apr. 9, 2002) (“Hoffert”).

3 The Examiner withdrew the rejection under 35 U.S.C. § 101. Ans. 3.
Therefore, this rejection is not before us on appeal.
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ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s obviousness rejections, and the Examiner’s responses to
Appellant’s arguments. In our analysis below, we highlight and address
specific findings and arguments.
Issues on Appeal
Issues: Under pre-AIA 35 U.S.C. § 103(a), did the Examiner err by
finding the cited combination of Rhoads, King, and Jones would have taught
or suggested contested limitations L1 and L2:
“computing a fingerprint from audio or visual content within the
content signal, wherein the fingerprint is derived from a portion of the audio
or visual content; . . . [and]
[L1] extracting the fingerprint from the first audio or
visual portion of the content signal; [and]
[L2] determining a watermark decoder based upon the
fingerprint; . . . [,]
within the meaning of independent claim 17?4 (emphasis added).
Claim Construction
At the outset, and as an initial matter of claim construction, we focus
our analysis on the recited claim terms “fingerprint” and “watermark.”
Although “watermark” is not recited as a stand-alone term in claim 17 (or in
any other claim on appeal), it is used as the first word of the claim term

4 We give the contested claim limitations the broadest reasonable
interpretation (“BRI”) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).

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“watermark decoder.” In considering the broadest reasonable interpretation
of Appellant’s claims in light of the Specification, we initially seek to clarify
the specific differences between a “fingerprint” and a “watermark.”

“Fingerprint”
A “fingerprint” is not defined in the claims in terms of what it is, but
rather is claimed in terms of how it is computed and how it is used. See
Claim 17. In terms of how the “fingerprint” is computed, we note the
second step of independent claim 17 expressly requires: “computing a
fingerprint from audio or visual content within the content signal, wherein
the fingerprint is derived from a portion of the audio or visual content.”
(emphasis added). Disputed limitation L2 of claim 17 specifies how the
fingerprint is used: “determining a watermark decoder based upon the
fingerprint.” (emphasis added). Turning to the Specification for context,
Appellant defines a fingerprint (at least with respect to audio media), as
follows: “The fingerprint is a number derived from a digital audio signal
that serves as a statistically unique identifier of that signal, meaning that
there is a high probability that the fingerprint was derived from the audio
signal in question.” Spec. 15, ll. 10–13.

“Watermark” and “Watermark Decoder”
The Specification broadly describes “watermarks” in the following
exemplary sentence: “using steganographic methods, such as digital
watermarking or other data hiding techniques.” Spec. 3, ll. 13–14 (emphasis
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added). We note steganography is the practice of concealing information
within a data file.5
Because Appellant’s disclosure focuses on various media types,
“namely audio signals (e.g., music, sound tracks of audio visual works,
voice recordings, etc. . . . including video, still images, graphical models,
etc.),” we broadly but reasonably construe the claim term “watermark” as
including any data that is hidden within media data in the application of
steganography. Spec. 2, l. 26–3, l. 2.
In steganography, hidden information (e.g., author or copyright
information), hidden encrypted messages, or other information could be
distributed, inserted, embedded, or encoded throughout the still image,
audio, or video media data file in a manner that would not be discernable to
the viewer and/or listener, because the watermark would ideally be
imperceptible or invisible “noise” in the media data file. See infra n.5. See
Spec. 3, ll. 12–14: “Another way to associate the identifier is to embed it as
auxiliary data in the audio signal using steganographic methods, such as
digital watermarking or other data hiding techniques.” See also Spec. 13, ll.
2–3:

5 See Microsoft Computer Dictionary, Fifth Edition, 2002, p. 498:
steganography n. A “hide-in-plain-sight” technique for
concealing information by embedding a message within an
innocuous cover message. In steganography, bits of
unnecessary data within an image, sound, text, or even a blank
file are replaced with bits of invisible information. The term
steganography comes from the Greek for “covered writing” and
has traditionally included any method of secret communication
that conceals the existence of the message. Because
steganography cannot be detected by decryption software, it is
often used to replace or supplement encryption.
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The steganographic embedding method may also be performed
at the time of transmission of an electronic file or broadcast of
the audio object. In the case of distribution via a network such
as the Internet (e.g., streaming or file download), real time
embedding enables the embedding process to also embed
context information that is specific to the consumer (or the
consumer’s computer) that has electronically ordered the object.
Spec. 13, ll. 2–3.
Although both watermarks and fingerprints can be types of metadata
(i.e., data about data), watermarks are typically hidden metadata. See Spec.
3, ll. 12–14. In contrast, fingerprints, as used in Appellant’s claims and
Specification, are derived (i.e., computed) from the audio or video media
content itself. Although a fingerprint might be unique (or expected to be
unique) with respect to the particular data content of a media file, “unique”
fingerprints are not claimed here.6
Thus, independent claim 17 recites, in pertinent part: “computing a
fingerprint from audio or visual content within the content signal, wherein
the fingerprint is derived from a portion of the audio or visual content;
[and] . . .
[L1] extracting the fingerprint from the first audio or
visual portion of the content signal;

[L2] determining a watermark decoder based upon the
fingerprint;

6 Cf. Spec. 16, ll. 21-22: “One type of identifier is a unique identifier for an
audio object. Another type of identifier is one that identifies some attribute
of the audio object, but does not uniquely identify it, such as a distributor or
broadcaster identifier. This type of identifier requires additional context
information to uniquely identify the audio object at the time of linking it to
actions or metadata.”

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determining, using the watermark decoder, the object ID
for the content signal;
Claim 17 (emphasis added).
Given the above discussion, we broadly but reasonably construe the
claim term “fingerprint” in terms of how it is computed (i.e., derived from
the media content — see “computing” step of claim 17), and how it is used:
it is extracted from the audio/video media content signal to determine (i.e.,
select) a watermark decoder based upon the fingerprint — see limitation L2.
See Claim 17.
We broadly but reasonably construe the claim term “watermark
decoder” as being determined (i.e., selected) based upon the fingerprint, and
being used to determine the object ID for the content signal. See Claim 17.

The Examiner’s Findings
In the Final Action, the Examiner initially finds the “Creator ID” of
Rhoads teaches or suggests the claim 17 “fingerprint” limitation, mapped as
follows: “computing a fingerprint (‘Creator ID,’ C.71, L.39) from audio or
visual content within the content signal (C.70, L.1-2), wherein the
fingerprint is derived from a portion of the audio or visual content (C.70,
L.1-2).” Final Act. 4.
However, the Examiner additionally finds the claim 17 “fingerprint”
limitation L1 (“extracting the fingerprint from the first audio or visual
portion of the content signal”) is taught or suggested by Rhoads, at column
66, line 56. Rhoads describes, at column 66, lines 41–42, encoding “a bit-
mapped image file with an identification code (URL address, for example),”
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in which the identification code is extracted, at column 66, line 56, as
mapped by the Examiner. See Final Act. 4 (emphasis added).
This portion of Rhoads particularly describes:
The foregoing portions of this description also detailed a
technique for reading or decoding steganographically
embedded information (see, generally, FIG. 3 and the text
associated therewith) that is readily adapted to implement
the present technology. In this regard, the otherwise
conventional user software 1010 is enhanced to include, for
example, the capability to analyze encoded bit-mapped files
and extract the identification code (URL address, for
example).
Rhoads, col. 66, ll. 49–57 (emphasis added).
We find this description (id.) of analyzing encoded bit-mapped files
to extract the identification code (e.g., a URL address), in accordance with
steganographic techniques, is more akin to a watermark in accordance with
our claim construction above. Because the identification code (URL
address) is not directly computed and derived from a portion of the audio or
visual content, we conclude it is not reasonably mapped to the recited
“fingerprint” in accordance with our claim construction above. See Rhoads,
col. 66, ll. 49–57. In the Answer, the Examiner does not further address
Rhoads’ extracted identification code (e.g., a URL), as described by Rhoads
at column 66, line 56.
However, the Examiner explains in the Answer that the “‘creator ID’
in Rhoads is a fingerprint because it is an identifier embedded in an image to
uniquely identify [the image] (C.69, L.1-8, C.69, L.41-43, C.71, L.44-46).”
Ans. 4 (emphasis added).
Regarding the question of whether the “creator ID” in Rhoads is a
fingerprint, the Examiner goes on to describe the “creator ID” as being
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contained within a watermark: “Thus, in Rhoads when the ‘Creator ID’ in
the watermark of the image is read by PictureMarc it triggers the
MarcCentre Locator Service to retrieve information from a database
pertaining to the ‘Creator ID.’” Ans. 4, last paragraph, last sentence
(emphasis added).
However, Rhoads indicates that the “‘creator ID’ may provide a
unique reference to the creator such that it “facilitates contact details.”
(Rhoads, col. 71, l. 34). Although the “creator ID” may be embedded in
Rhoads’ watermark, we find it cannot be the recited “fingerprint” within
claim 17, because the “creator ID” was not “derived from a portion of the
audio or visual content,” as expressly required by claim 17. Rather, in
Rhoads, “When subscribing, the user is given a unique Creator ID.”
Rhoads, col. 71, ll. 30–31 (emphasis added).
Appellant urges that both limitations L1 and L2 are not taught or
suggested by the Examiner’s proffered combination of Rhoads, King, and
Jones because:
Nothing in Rhoads discloses, suggests, or teaches that the
“MarcCentre Locator Service” is determined based on a
fingerprint, as claimed. The Office Action stated that the
MarcCentre Locator Service is “determined based upon the
‘creator ID’ (C.72, L.61-62).” This statement is simply not true.
The MarcCentre Locator Service looks up the creator ID, the
MarcCentre Locator Service is not “determined” based on the
creator ID.
Appeal Br. 18.

Based upon our review of the record, we find a preponderance of the
evidence supports Appellant’s contentions. As discussed above, we find the
“creator ID” in Rhoads is not a fingerprint in accordance with our claim
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construction, because Rhoads describes that when a user subscribes to
MarcCenter (“an online locator service” col. 71, ll. 24–25), “the user is
given a unique Creator ID.” Rhoads, col. 71, ll. 30–31. Thus, the “creator
ID” in Rhoads cannot be a fingerprint because it is not derived from the
media content, as discussed above, and as claimed. See Claim 17. Instead,
the “creator ID” is: (1) given to the user (i.e., the creator of the images), and
(2) merely “links all of the user’s images to facilitate contact details.”
Rhoads, col. 71, ll. 33–34.
We also find a preponderance of the evidence supports Appellant’s
additional contention that the “MarcCentre Locator Service is not
‘determined’ based on the creator ID.” Appeal Br. 18. We agree with
Appellant that because Rhoads only describes a single “MarcCentre
Locator” (see Fig. 44), it logically follows that “Rhoads does not suggest
there are more than one MarcCentre Locator Service to choose from (or to
‘determine’)” (e.g., the recited “determining a watermark decoder”) based
upon the fingerprint, as claim 17 recites. Reply Br. 5.
Based upon our review of the record, we find the Examiner has not
established that the secondary King and Jones references remedy the
aforementioned deficiencies of Rhoads regarding all claims rejected under
Rejection A. Regarding disputed limitations L1 and L2 of independent
claim 17, we note remaining independent claims 27 and 28 recite similar
limitations of commensurate scope.
Nor has the Examiner established that the additional Oka reference (as
relied upon in support of Rejection B), or the additional Hoffert reference (as
relied upon in support of Rejection C) remedies the aforementioned
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deficiencies of the Rhoads, King and Jones base combination, as relied upon
as evidence in support of Rejection A.
Therefore, for essentially the same reasons argued by Appellant in the
Briefs, as discussed above, we are constrained on this record to reverse the
Examiner’s obviousness rejections A, B, and C of claims 17–36 and 38–40
on appeal.
CONCLUSION
The Examiner erred in rejecting claims 17–36 and 38–40, as being
obvious under pre-AIA 35 U.S.C. § 103(a), over the combined teachings and
suggestions of the cited prior art.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
17–20,
24–31,
35, 36, 38,
40
pre-AIA
103(a)
Rhoads, King,
Jones
17–20,
24–31,
35, 36, 38,
40
21–23,
32–34
pre-AIA
103(a)
Rhoads, King,
Jones, Oka
21–23,
32–34
39 pre-AIA
103(a)
Rhoads, King,
Jones, Hoffert
39
Overall
Outcome
17–36,
38–40

REVERSED